WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Sidamsa- Continente Hipermercados, S.A. v. Rose Communications, S.L.

Case No. D2000-1748

 

1. The Parties

Complainant is Sidamsa- Continente Hipermercados, S.A., a corporation duly organized and validly existing under the laws of the state of Spain, with its principal place of business located at Ctra. de Burgos, Km 14,500, E-28108 Alcobendas, Madrid, Spain.

Respondent is Rose Comunications, S.L., a limited liability company duly organized and validly existing under the laws of the state of Spain, with its principal place of business located at La Vega, 34, 45223 Seseña (Toledo), Spain, as confirmed by Respondent.

 

2. The Domain Name and Registrar

The domain name under dispute is <denuestratierra.com> (the "Domain Name").

The registrar of the domain name under dispute is Network Solutions, Inc. ("NSI" or the Registrar), with business address in Herndon, Virginia 20170, USA.

 

3. Procedural History

On December 15, 2000, and December 18, 2000 (original) and January 9, 2001 (the copies of the complaint), Complainant submitted its Complaint through e-mail and hardcopy, respectively, with the required filing fee for a three 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 Acknowledgement of Receipt of Complaint was sent to Complainant by the WIPO on December 19, 2000.

On December 21, 2000, WIPO sent a "Request for Registrar Verification" via email to NSI requesting a confirmation that NSI had received a copy of the complaint; that the domain name under dispute is registered with NSI; that Respondent is the current registrant of such domain name and full contacts details available under the WHOIS database. On December 22, 2000, WIPO received via e-mail from NSI the "Network Solutionsí Verification Response" confirming the above as well as that the Domain Name is currently registered to Respondent and is in "active" status, and that a certain Network Solutions 5.0 Service Agreement is in effect.

On January 10, 2001, WIPO completed a "Formal Requirements Compliance Checklist". It is worth mentioning that 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.

On January 11, 2001, WIPO properly sent via e-mail and hardcopy through express mail to Respondent and to its administrative, technical and billing contacts, a "Notification of Complaint and Commencement of Administrative Proceedings" enclosing a copy of Complainantís complaint and confirming the formal initiation of this proceeding as of such date, and granting a term for providing a response no latter that January 30, 2001. Such e-mail and hardcopy were received by Respondent on January 11 and on January 12, 2001, respectively. Furthermore, hardcopy of such Complaint as confirmed by Complainant was also previously sent by Complainant to Respondent via courier on December 15, 2000. A copy has also been communicated to the ICANN and to the Registrar.

This Panel considers that the complaint was properly notified to the registered domain-name holder, the technical contact, and the administrative contact as provided for in paragraph 2 (a) of the Rules.

On January 29, 2001 and on January 31, 2001, Respondent submitted its Response to the Complaint through e-mail and hardcopy, respectively, to the WIPO Center.

An Acknowledgement of Receipt of Respondentís Response was properly sent to Respondent by the WIPO Center, with copy to the Complainant.

Complainant proposed that the dispute be decided by a Single-member Panel, as may be evidenced from paragraph 14 of Complainantís complaint. Respondent decided to reject such proposal and requested that the dispute be decided by a three-member Panel. In consideration to the above, the WIPO Center appointed an Administrative Panel integrated by the three undersigned members, in accordance to what is provided for under paragraph 6(c) of the Rules.

During the month of February, 2001, the undersigned Panelists received proper invitations to participate as Panelists in the referred domain name dispute proceeding. During such month the undersigned Panelists signed and sent to the WIPO Center, their respective Statements of Acceptance to participate as Panelists together with their relevant Declarations of Impartiality and Independence.

On February 23, 2001, WIPO sent to Complainant and Respondent a "Notification of Appointment of Administrative Panel and Projected Decision Date", appointing the undersigned as Panellists, in a Three Member Panel, and scheduling March 8, 2001, as the date for issuance of the Panelís decision, pursuant to paragraphs 6 (f) and 15 (b) of the Rules. On the same date, WIPO transmitted the case file to the Panelists, with copy being sent to Complainant and Respondent.

On February 28, 2001, the parties requested the Administrative Panel that supplemental filings be accepted in clarification to the evidence and argumentation submitted by their counterparts.

On March 12, 2001, the Administrative Panel issued a Procedural Order Number 1 in order to allow them to fully present their respective cases and give them opportunities to respond or comment to any new documentation submitted, under a new round of submissions and allegations. For such purposes the parties had a seven working day period. It is hereby noted that Complainant submitted a certain supplemental filing regarding Respondentís response, and Respondent filed additional evidence and argumentation regarding the above mentioned Complainantís supplemental filing.

In consideration to the above mentioned requests for additional submissions, and to the timing required to execute the above mentioned procedural order, the Administrative Panel decided to re-schedule the date for the final issuance for the Panelís decision to April 10, 2001.

The Panel has thereafter not received further requests from Complainant or Respondent regarding additional 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 proceeding.

The language of the proceeding is English, as being the language of the domain registration and Service Agreement, pursuant to paragraph 11(a) of the Rules, and also in consideration to the circumstances of this administrative proceedings and to the fact that there is no express agreement to the contrary by the parties. 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 both parties be treated with equality in these administrative proceedings, the Panel has agreed to receive and consider all writs, information and 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 is a company which was owned by French Promodes Group which merged in September of the year 2000 with and into the Carrefour Group in France whose activity is mainly related to the food trade through supermarkets and foodstuff superstores.

A Network Solutionsí WHOIS database search indicates that Respondentís registration of the domain name <denuestratierra.com> was created on December 6, 1999.

The Complainant indicated that it holds, among others, the following trademarks in Spain, relevant to this Complaint as supported by copy of the Spanish Official Industrial Property Gazette:

a) Trademark CONTINENTE, PRODUCTOS DE NUESTRA TIERRA, under registration Number 2085200 (2) issued on April 9, 1997, on class 35 for advertisement services with Sidamsa-Continente Hipermercados, S.A., as the sole and exclusive listed owner.

b) Trademark CONTINENTE, NUESTRA TIERRA, under registration Number 2093151 (4) issued on May 20, 1997, on class 35 for advertisement services with Sidamsa-Continente Hipermercados, S.A., as the sole and exclusive listed owner.

c) Trademark and design DE NUESTRA TIERRA, ALTA SELECCION under registration Number 2115393 (0) issued on September 24, 1997, on class 29 for meat, fish, poultry and others, with Sidamsa-Continente Hipermercados, S.A., as the sole and exclusive listed owner.

d) Trademark and design DE NUESTRA TIERRA, ALTA SELECCION under registration Number 2115394 (9) issued on September 24, 1997, on class 30 for coffee, tea, cocoa, sugar and others, with Sidamsa-Continente Hipermercados, S.A., as the sole and exclusive listed owner.

e) Trademark and design DE NUESTRA TIERRA, ALTA SELECCION under registration Number 2115395 (7) issued on September 24, 1997, on class 31 for agricultural products and others, with Sidamsa-Continente Hipermercados, S.A., as the sole and exclusive listed owner.

f) Trademark and design DE NUESTRA TIERRA, ALTA SELECCION under registration Number 2115396 (5) issued on September 24, 1997, on class 32 for beer, mineral water and others, with Sidamsa-Continente Hipermercados, S.A., as the sole and exclusive listed owner.

g) Trademark and design DE NUESTRA TIERRA, ALTA SELECCION under registration Number 2115397 (3) issued on September 24, 1997, on class 33 for alcoholic beverages, with Sidamsa-Continente Hipermercados, S.A., as the sole and exclusive listed owner.

h) Trademark and design DE NUESTRA TIERRA, ALTA SELECCION under registration Number 2115398 (1) issued on September 24, 1997, on class 29 for meat, fish, poultry and others, with Sidamsa-Continente Hipermercados, S.A., as the sole and exclusive listed owner.

i) Trademark and design DE NUESTRA TIERRA, ALTA SELECCION under registration Number 2115399 (X) issued on September 24, 1997, on class 30 for coffee, tea, cocoa, sugar and others, with Sidamsa-Continente Hipermercados, S.A., as the sole and exclusive listed owner.

j) Trademark and design DE NUESTRA TIERRA, ALTA SELECCION under registration Number 2115400 (7) issued on September 24, 1997, on class 31 for agricultural products and others, with Sidamsa-Continente Hipermercados, S.A., as the sole and exclusive listed owner.

k) Trademark and design DE NUESTRA TIERRA, ALTA SELECCION under registration Number 2115401 (5) issued on September 24, 1997, on class 32 for beer, mineral water and others, with Sidamsa-Continente Hipermercados, S.A., as the sole and exclusive listed owner.

l) Trademark and design DE NUESTRA TIERRA, ALTA SELECCION under registration Number 2115402 (3) issued on September 24, 1997, on class 33 for alcoholic beverages, with Sidamsa-Continente Hipermercados, S.A., as the sole and exclusive listed owner.

It is hereby noted that Complainant referred in its Complaint that the above mentioned trademark registrations were granted on different dates as well as some of them including the word PRODUCTOS, both of which are not referenced in the above- mentioned Industrial Property Gazette.

Complainant further indicates that all these trademarks include the name "DE NUESTRA TIERRA", as being the principal element of the marks at issue. That such mark owned by Complainant symbolizes the quality, goodwill, manufacturing and commercializing principles developed by it and by Centros Comerciales Carrefour, for the purpose of being a high-quality trademark to mainly identify especially qualified goods.

That the goods sold under the trademark "De Nuestra Tierra", at some establishments are purchased under separate and at different stands in order to allow the public to be conscious of the special qualification of such goods, as well as to meet the consumerís quality expectations. That the goods purchased under the trademark "De Nuestra Tierra" have been carefully chosen in accordance to a list of specific parameters, drawn up by the Carrefour Group, and to be met by each one of the manufacturers of the goods.

That there is no doubt that most Spaniard consumers would identify the "DE NUESTRA TIERRA" brand and relate it to the Complainant.

That the distributors identified in the web of the Respondent are all established in Spain, and are small companies whose main activity is the manufacturing of the same goods sold by the Complainant under the same name.

That in Spain, where the Respondent and the manufacturers and distributors of the goods are established, there are 124 supermarkets under the trade name Carrefour and 141 supermarkets under the trade name Supermercados Champion, owned also by Carrefour Group. That at such establishments the goods identified under the name, trademark and stands "DE NUESTRA TIERRA" are being exclusively sold.

That there has been a significant investment in advertising campaigns, initiated since September 1998 to make consumers well acquaintance with this trademark.

That a certain notarized letter was sent on June 6, 2000 informing the Respondent of the legitimate rights of the Complainant to the mark "De Nuestra Tierra". That since the receipt of the notarized letter the Respondent has been developing an active advertising campaign although they are aware of the Complainantís exclusivity rights.

The referenced notarized letter was answered by the Respondent on June 23, 2000. That in such response the Respondent alleged the generic and non-distinctive character of the registered trademarks.

That under Respondentīs website identical goods to the ones protected by the Complainantís registered trademark are being offered through e-commerce. That therefore, the consumer is led to confusion and association for the acquisition of such goods.

With respect to Respondent, such party indicated that in mid-1999, Respondent proposed to the Spanish Regional Government of Castilla-La Mancha to develop a project aimed at the incorporation of Small and Medium Enterprises (SMEs) of this region into the new economy. The project intended to develop an operational platform which would serve to SMEs to sell online their goods from their rural premises all over the world. That the project was developed rapidly thanks to the enthusiasm of Respondentís initiatives and the enormous potential of Castilla-La Mancha region as a producer of high-quality and well-reputed goods. That in that zone, the expression "de nuestra tierra" is quite frequently used. That this wording is also popular all around the world.

That the name selected for the project was DeNuestraTierra.com, identified as a name used in the Region to commonly refer to goods. The expression "De Nuestra Tierra" was also regularly used as a slogan in public awards granted, since the early 90ís, by the regional Government.

 

5. Partiesí Contentions

A. Complainant

The Complainant alleged that their trademarks referred to above include the name "DE NUESTRA TIERRA", as being the principal element of the marks at issue.

That there is no doubt about the legitimate rights of the Complainant regarding a large trademark portfolio identical to the domain name object of this Complaint That there is no less doubt about the lack of any legitimate intellectual property rights or any other whatsoever, of the Defendant to that name, and to the proof of the Defendantís bad faith in registering and using such domain name.

That the Complainant has exclusive rights, due to the Spanish Trademark Act and the European Union Treaties (the Rome Treaty) and Statutory Law to the referred name that identifies the goods sold.

That the Respondent is established in Madrid within the geographical area where the Complainant owns several supermarkets Carrefour and Champion where the goods identified under the trademark of the Complainant are purchased under big and wide stands, not possible to be ignored by anyone.

That the Respondent is selling the same goods (olive oil, vinegar, honey, cheese, garlic, ham, preserved goods, alcoholic beverages...) under the same name, on the Internet, and has as intention to obtain a profit with the registration of a trademark as a domain name for selling the same goods.

That the advertising as well as the official and public trade dress campaign of the mark "De Nuestra Tierra" made by the Complainant is dated May 1999, this is six months prior to the registration of the domain name "De Nuestra Tierra" by Respondent made on December 6, 1999. Moreover, that the beginning of the Complainantís advertising campaign dates from September, 1998.

That the Respndent has been taking unfair advantage of the reputation of the Complainant and Centros Comerciales Carrefour, S.A. and Supermercados Champion where the food stuff under the trademark "De Nuestra Tierra" is commercialized under the verbal authorization for the use of the trademark of the Complainant.

That the goods identified under the trademark "De Nuestra Tierra" began to be sold at the authorized establishments on September 1998.

That it was long after the commercializing of the Complainantís trademark when the Respondent decided to register the domain name <denuestratierra.com>.

That the Complainant has never authorized the Respondent to use the mark "DE NUESTRA TIERRA", either by granting a license or franchising or in any other way the mark "DE NUESTRA TIERRA" to the Respondent.

That the presumed purpose of the Respondent in registering the domain name object of this Complaint, is to obtain some profit of it through misleading the consumer about the origin of the goods by association or confusion due to the identity of the marks at issue and the identity of the offered and commercialized goods.

That the indiscriminate and non authorized use of the registered trademark by third parties will provoke the dilution of the mark, and therefore the decreasing in the final value of the mark "De Nuestra Tierra" with the considerable decreasing in the Complainantís portfolio assets.

That there are some circumstances which increase the risk of confusion, an association, especially and could be viewed as an evidence of the use in bad faith of the domain name. That Complainantís stylized trademark is absolutely identical to the mark included in the website under the domain name <denuestratierra.com> owned by the Respondent.

That when the parties have their residence in the same country, they must submit themselves to the National Law and the principles of their country law, being in this particular case the Spanish Trademark Act 1988, which in its Section 30 stipulates that "The registration of a trademark confers upon its owner the exclusive right to use it for economic purposes". Furthermore, International Treaties such as the Paris Union Convention (Section 6 Bis 1) and the TRIPíS Agreement (Agreement on Trade Related Aspects of Intellectual Property), grants a special protection to well-known trademarks.

Furthermore, Complainant notes that under section 6 of the Spanish Unfair Competition Act 1991, "Any act which lends itself to creating confusion concerning the activity, goods, services, or establishment of another shall be considered unfair..."

That under section 11 of the Spanish Unfair Competition Act 1991, Ö"the imitation of the goods, services and entrepreneurial initiatives of others is unrestricted, unless they are protected by an exclusive right"Ö Furthermore, that Ö"the imitation of a third partyís products or services shall be considered unfair when it lends itself to producing mental association in the minds of consumers regarding the goods or services in question, or when it involves improperly exploiting the reputation or efforts of an otherÖ". That Ö"the improper exploitation, for oneís own benefit or that of another of the advantages resulting from the industrial, commercial or professional reputation of another party operating in the market shall be considered unfair. In particular the use of distinguishing marks of others"...

That it is most inconceivable that Rose Communications, S.L. was unaware of the fact that "DE NUESTRA TIERRA" is a registered trademark which identifies goods that are widely commercialized at the supermarkets Champion and Centros Comerciales Carrefour, S.A.

That the avoiding of the confusion and association is included in the Trademark Act of most countries and international treaties administered some of them by the WIPO.

With respect to the supplemental filing made by the Complainant to argue against the Respondents citations, the Complainant indicated:

- their objection to the use of a domain name absolutely identical to Complainantís registered and in force trademarks, due to the identity and consequent risk of confusion and association to be easily incurred by the consumers and induced by the Respondent.

- that the goods sold by the Respondent on their website <denuestratierra.com> are also identified by the label of the manufacturer. That the purchasing of such goods is confusing because they are sold under a third partyís registered trademark, by using an identical domain name, as well as including the same design and drawings registered and used by the Complainant.

- That Respondentís design and color combination used in the <denuestratierra.com> web page are absolutely similar to the design included in the Complainantís mark.

Lastly, Complainant has requested under paragraph 4 (i) of the Policy, that the Administrative Panel appointed in this proceeding issue a decision ordering that the contested domain name be transferred to the Complainant.

B. Respondent

The Respondent manifests that the Complainant has filed this dispute in an evident exercise of bad faith, with the sole aim to discredit and distort the legitimate business growth of the Respondent.

The Respondent manifests that the referred to mixed trademarks are not at all publicly perceived as the Complainantís trademarks, either in the region of Castilla-La Mancha or in the rest of Spain. That similar terms are used by many different entities, including the Complainantís fierce competitors as evidenced from the documentation that was provided. Therefore, the Respondent refutes the arguments expressed by the Complainant that most Spanish consumers would identify these terms as related to the Complainant.

That the Complainant has failed to prove that it is holder of the trademark DE NUESTRA TIERRA. That the Complainant is not entitled, nor is it the holder of any rights for exclusive use of the words DE NUESTRA TIERRA. That its claimed trademarks are of mixed type and significantly more specific. That the Complainant makes an inaccurate statement when indicated that its trademark numbers M 2115393, M 2115394, M 2115395 and M 2115396 are for the name DE NUESTRA TIERRA. That the Complainant has intentionally modified its names in an obvious bad faith manoeuvre. That the words "ALTA SELECCION", as they appear in the Spanish Trademarks and Patents Office Gazette, are intentionally omitted in table of the Complaint which describes the trademarks of the Complainant.

That the Complainant submitted an issue of the Spanish Trademarks and Patents Office Gazette containing the Complainantís applications, which does not show their legal status. That the Complainant fails in the formal procedure to accredit its titles. That tracking of current practices followed by the Spanish Trademarks and Patents Office shows that there are many other holders of trademarks including the words DE NUESTRA TIERRA, even the Complainantís direct competitors.

That the Complainant has no exclusive rights to use the words DE NUESTRA TIERRA.

That the term DE NUESTRA TIERRA would never be subject to any trademark, as it represents a combination of generic terms, widely used in Spanish terminology.

That the Complainantís trademarks are sufficiently different than the domain name. That the Complainant trademarks are distinct just because they incorporate fanciful drawings. That since the trademarks that the Complainant has selected are so generic, the Respondent can not be responsible for any potential confusion that may occur.

That Respondent rejects the aim of the Complainant to claim exclusive rights on generic terms of the Spanish vocabulary.

That none of the products being sold on the Website <denuestratierra.com> are identical to those labelled as the Complainantís claimed trademarks. That the corresponding trademarks of any goods being offered in DeNuestraTierra.com are properly labelled with their own trademark. Furthermore, that the Complainantís line of products under the trademarks claimed, does not include any of the typical Castilla-La Mancha goods, quite the contrary of the Respondentís bona fide offering, that is specialized in these products.

That the Respondent has been making its own efforts to promote its Website, as it may be checked in numerous public press releases, paid adverts, inserts and public appearances in the Spanish media, Internet, Trade Shows and specialised magazines. That the Respondent has invested, from the start, in promoting the Website <denuestratierra.com>.

That as an evidence of good faith business behavior, the Respondent submitted its business plan and professional relations with suppliers and customers, as well as a description of the Respondentís business activities and its Organisation.

That considering that the domain name <denuestratierra.es>, which might suit the Complainantís needs, is still available, either the Complainant has no effective interest in developing its business on the Internet, or the Complainant does not have any exclusive title to use the expression "de nuestra tierra", and the Spanish ESNIC will reject, or has already denied, the Complainantís application.

That the Respondent believes that solid grounds have been shown to reject any and all arguments as provided by the Complainant, and specifically:

- That the Complainant has failed to demonstrate exclusive rights to the name "de nuestra tierra".

- That the domain name <denuestratierra.com> is NOT identical nor confusingly similar to any of the Complainantís claimed trademarks;

- That the Respondent has legitimate interests in respect of the domain name <denuestratierra.com>;

- That the registration of the domain name <denuestratierra.com> was made according to reasonable grounds in a business environment. That the domain name <denuestratierra.com> is being used in a bona fide offering of goods and services;

- That the Respondent has never offered to the Complainant or third parties any domain name registration;

- That because of obvious differences between the Complainant and the Respondent, the Respondentís activities do not disrupt the Complainantís businesses;

- That because of lack of public perception of the Complainantís claimed trademarks, different products offering, etc., no commercial gain can be obtained by the Respondent as a consequence of using the domain name DeNuestraTierra.com;

- That since day one, the Respondent has been very active using the domain name <denuestratierra.com>;

- That the Respondent is commonly known by its domain name <denuestratierra.com>;

- That the Respondent is making a legitimate and fair commercial use of its domain name <denuestratierra.com>.

That the Panel must conclude that the Complainant has failed to meet its burden of proof with respect to the Policy and, consequently, must deny the Complainantís claim.

With respect to the supplemental filing made by the Respondent to argue against the Complainantís supplemental filing, the Respondent indicated:

- That the Complainant did not challenge the legitimate rights of the Respondent to use the name "DE NUESTRA TIERRA".

- That the Complainant has no single registered trademark coinciding with the name "DE NUESTRA TIERRA".

- That the Complainantís claimed trademarks are of a mixed type and include distinctive signs and specific wording and fanciful drawings.

- That Consumers are impressed with the overall perception of the trademark. That when examining a trademark the overall structure of the trademark prevails over any individual component.

- That the Complainant failed to provide evidence of the existence of its trademark rights as the documentation that was submitted are only records of consultation to the Spanish Patent and Trademark Office.

Finally, that in consideration of the clear evidence of bad faith in the complaint, the Panel must make a finding of reverse domain name hijacking.

 

6. Discussion and Findings

The Panel considers that the Respondent by registering the contested domain name with Network Solutions, Inc., agreed to be bound by all terms and conditions of Network Solutions Service 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 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, the 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 proceeding giving the Respondent a right to respond. That there is sufficient and adequate evidence confirming the above.

This Panel as directed by paragraphs 14 (a) and (b) and 15 (a) of the Rules shall decide the 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, and may draw such inferences there from as it may consider appropriate.

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.

With respect to the first of such elements, this Panel finds that Respondentís Domain Name is not identical nor confusingly similar to Complainantís "DE NUESTRA TIERRA ALTA SELECCION" and "PRODUCTOS DE NUESTRA TIERRA ALTA SELECCION" and other related trademarks. The trademarks "DE NUESTRA TIERRA ALTA SELECCION" and "PRODUCTOS DE NUESTRA TIERRA ALTA SELECCION" and others related to such nominations and designs, were registrated as mixed marks, this is, as a combination of designs and words. The Complainant does not own the trademark "DE NUESTRA TIERRA" by itself. The marks "DE NUESTRA TIERRA ALTA SELECCION" and "PRODUCTOS DE NUESTRA TIERRA ALTA SELECCION" are registered with either a design element or stylised letters. The Complainant apparently does not have a word-only registration for "DE NUESTRA TIERRA" in Spain. Such phrase is used in a number of other registered trademarks using a combination of design and words. Furthermore, it appears that the mark would not have been registered without the unique combination of words and designs because it would not have been sufficiently distinctive. The words "de nuestra tierra" should also be considered as a customary phrase in the Spanish language as used by other parties on the Internet.

Furthermore, this Panel finds that the Respondent has rights or legitimate interests in respect of the domain name as: (i) it has used or prepared to use the <denuestratierra.com> domain name in connection with bona fide offering of goods or services as contemplated under Paragraph 4 (c) (i) of the Policy; and, (ii) the Respondent is commonly known by the domain name as contemplated under Paragraph 4 (c) (ii) of the Policy.

The Panel also finds that the Respondent has not used the Domain Name in bad faith, in particular but without limitation, pursuant to Paragraph 4 (b) of the Policy, in view that the Respondent is not 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, as to the source, sponsorship, affiliation, or endorsement of the Respondentsí website; nor there are circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; nor has the Respondent 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, nor the Respondent has registered the domain name primarily for the purpose of disrupting the business of the Complainant.

The Panel, finds that the Complaint was not filed as an attempt at Reverse Domain Name Hijacking as it was not brought in bad faith primarily to deprive a registered domain name holder of a domain name. This Panel considers that the Complainant did not launch an unjustifiable Complaint in bad faith and with malice or insupportable evidence and argumentation as it may be considered as a clear abuse of the administrative proceeding designed to deprive the Respondent of its domain name. Under these circumstances, the Panel declares the complaint was not brought in bad faith, nor as an attempt at Reverse Domain Name Hijacking or in an abuse of this administrative proceeding.

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 proceeding 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 non 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 by majority decides:

(1) that the Domain Name registered by Respondent is not identical nor confusingly similar to Complainantís DE NUESTRA TIERRA ALTA SELECCION" and "PRODUCTOS DE NUESTRA TIERRA ALTA SELECCION" and other related trademarks;

(2) that Respondent evidenced rights or legitimate interests in respect of the Domain Name <denuestratierra.com>; and

(3) that the Domain Name <denuestratierra.com> was not registered nor was being used in bad faith by the Respondent.

Therefore, the Panel decides in favour of the Respondent and further requires that the Complaint be dismissed.

 


 

Pedro W. Buchanan
Presiding Panelist

Frederick M. Abbott
Panelist

Marino Porzio
Panelist

Dated: April 26, 2001.

 


 

Dissenting Opinion by Panelist Marino Porzio.

Panelist Marino Porzio, Esq. was not able to concur with the opinion of the Panel Majority as reflected in this Decision. The full text of his dissenting opinion, as written by Panelist Marino Porzio, Esq., is as follows:

"My disagreement with the Panel majority results from the main conclusion of the Decision which finds that the Domain Name at issue is "not identical nor confusingly similar" to the Complainantís trademarks. As a consequence of this main discrepancy, I am not in a position either to concur to the second and third consequential decisions of the Panel majority.

While I have to agree that the Respondentís Domain Name is not "identical" to the Complainantís trademarks, this Domain Name in my view is definitely "confusingly similar" to the several trademarks cited by Complainant, particularly the trademark "DE NUESTRA TIERRA ALTA SELECCION".

Before analyzing this similarity, I have perhaps to state that when comparing a Domain Name with a Trademark, I believe it is not the Panelís task to enter into the merits of the trademark registration itself. The Panel is not to determine whether a given trademark can be or could have been the subject of registration according to the law of any country.

The fact that the trademark cited in a given case is validly registered in the country of the party citing such trademark, should be considered sufficient by the Panel for all purposes.

In this particular case, the Complainantís trademarks are all legally registered in Spain, irrespective of the problems they may have encountered at the time of their application. Therefore, the Panelís task should be to compare these trademarks, as registered, to the Domain Name subject to the dispute in order to determine their possible similarity and the degree of the same.

In this respect, in the first place the Panel should examine the registered trademarks to determine their real structure and the manner they are being used and this should be done according to the normal and practically universal criteria of Trademark law and practice.

In the case of trademarks "DE NUESTRA TIERRA ALTA SELECCION", it is certainly true that these trademarks were registered as "mixed" marks, this is, as a combination of words and figurative elements. Whether this was done because otherwise it would have not been possible to register the mark is completely irrelevant. The fact is that trademarks "DE NUESTRA TIERRA ALTA SELECCION" were actually accepted to registration by the Spanish competent authorities and we can thus assume they complied with all legal, administrative and policy requirements of the Spanish Trademark Authority.

Moreover, it seems necessary to point out that at the time of their application, the Complainant inserted a disclaimer in the sense that no protection was requested for the generic words "ALTA SELECCION". This clearly results from the abundant evidence filed by both parties, in particular the Respondent who went as far as filing copies of the Complainantís application proceedings in connection with these trademarks.

When examining this trademark it can be noticed that it consists of a number of elements: The words "DE NUESTRA TIERRA" depicted in a prominent manner, over a sort of landscape in brown and yellow. Visually, the main distinctive element is doubtless constituted by the words "DE NUESTRA TIERRA" which are included very prominently in a particular and peculiar typography. This typography is important because it constitutes one of the very distinctive aspects of this trademark and it has thus been consistently used in all promotion and publicity campaigns of the Complainant according to the several documents filed in the proceeding.

From the analysis of the trademark it is also evident that generic words "ALTA SELECCION" are not intended to be more than descriptive or indicative words of the quality of the products, such as similar wording contained in a number of trademarks like "first quality", "premium", "first selection", "old vintage", etc. In addition, this fact is confirmed by documents filed in the proceedings, where it appears that they were the object of a disclaimer by the Complainant, at the time of the application.

Hence, the intended main element and distinctive character in all the Complainantís trademarks is given by the expression "DE NUESTRA TIERRA". Although this is a "mixed" trademark, the only manner to refer to or to mention the trademark is by using its word elements and this is true for all mixed marks. Naturally, when the trademark is used in practice, it will be shown in its entirety with the addition of the figurative elements it consists of.

This is particularly true for the ten of the Complainantís registered trademarks "DE NUESTRA TIERRA ALTA SELECCION" which appear listed in the "Factual Backround" section of the Decision, in letters c) to l), and covering different kind of foodstuff.

The above conclusion is evident when analyzing the several promotions and advertising campaigns carried out by the Complainants since they started using and promoting these trademarks throughout Spain, in connection with certain products related to foodstuff.

All pictures and advertising material used in these campaigns, according to the evidence submitted in the proceeding, depict the words "DE NUESTRA TIERRA", always written with the same distinctive typography.

A few months after the Complainant started the promotion campaigns, the Respondent obtained registration of the Domain Name <denuestratierra.com>, allegedly to be used in connection with certain goods of the Spanish Region of Castilla La Mancha. To be noted that the goods for a great part are exactly the same or at least in the same food sector that those distinguished by the Complainantís trademarks. Also to be noted that despite the Respondentís allegations that the intended use of the Domain Name is the promotion of goods from the region of Castilla La Mancha only, the Complainantís promotion of similar goods have covered the whole of Spain, including naturally the Region of Castilla La Mancha.

However, the most interesting fact is that the Respondent, when materially using the registered Domain Name, has choosen to do it with an appearance which is practically identical to the typography of Complainants registered trademarks "DE NUESTRA TIERRA".

In fact, when opening the Respondentís web site <denuestratierra.com> the first thing appearing is the phrase "De Nuestra Tierra" written with an almost identical typography than the one used in Complainantís registered trademarks "DE NUESTRA TIERRA". Anybody familiar with trademark "DE NUESTRA TIERRA" when watching the material appearance of the Domain Name on the screen, can only get the impression that it is the same campaign already seen in advertising material and in the several shops of the Complainant.

In fact, the Respondent seems to have decided to use the registered Domain Name not only as an Internet address but, in addition, as a trademark for the products he intends to commercialize and this is very evident to whoever examines the pictures included the the material filed in the proceedings. The Respondentís statements that each advertised product does have its own trademark is true. However, it is also true that when an advertisement appears depicting "Miel [honey] DE NUESTRA TIERRA"; "Aceite de Oliva [Olive Oil] DE NUESTRA TIERRA", etc. and the expression DE NUESTRA TIERRA appears in a prominent manner and in a stylized typography, this expression is clearly being used as a "trademark", irrespective of any other trademarks that such advertisement may also contain.

Moreover, all advertisements appearing in the Respondentís web site are designed in the same manner and this can only leave in the public the clear impression that the goods marketed through the site are all distinguished by the same trademark "DE NUESTRA TIERRA".

The trademark character of these expressions is not diminished by the addition in very small characters of "w.w.w." at the beginning and ".com" at the end.

In this connection, it is to be recalled again that the Respondent is not only using exactly the same expression as the main word elements of the Complainantís trademarks "DE NUESTRA TIERRA", but he is also using those expressions in the same stylized typography that will certainly lead the public to think that the products object of advertising are the same products distinguished by the Complainant with their several registered trademarks "DE NUESTRA TIERRA".

In conclusion, for this Dissenting Panelist, the registered Domain Name is not only clearly "confusingly similar" to the Complainantís registered trademarks but the Respondent is also clearly imitating the material appearance of the Complainantís trademarks when materially reproducing the Domain Name. The obvious result of this imitation is the confusion it will certainly cause in the public for the benefit of the Respondent.

In addition, it is the opinion of the Dissenting Panelist that the Respondent has no right nor legitimate interest in respect of the Domain Name, which is clearly confusingly similar to trademarks registered earlier, that clearly belong to the Complainant and that are profusively and publicly used by the Complainant throughout Spain.

Moreover, it is the opinion of the Dissenting Panelist that in view of all above considerations, the Respondentís bad faith should be assumed when he registered and is actually using the Domain Name at issue. In fact, the Respondent seems to have very cleverly found the manner to use a well-known trademark for its own benefit through the channel of a Domain Name. This bad faith results from the documentary evidence in the proceeding and, in particular, by the Respondentís strenuous efforts to disqualify the legality and validity of the Complainantís registered trademarks.

In relation to the existence of bad faith, this Panelist believes that circumstances provided for in Paragraph 4, b), ii) and iv) are present in this case. In fact, by registering the Domain Name <denuestratierra.com> the Respondent made sure the impossibility for the Complainant to register their Trademark as a Domain Name (Para. 4,b) ii). In addition, the fact that the registered Domain Name is confusingly similar to several registered trademarks which are being actively used in commerce, for the same kind trade sector, provokes the natural attraction of Internet users in the belief that they are dealing with a trademark already known to them. In this manner, the Respondent is obtaining commercial gain from this confusion (Para. 4, b) iv)).

The Dissenting Panelist would rule that the Complainant has met its burden and that the imputed Domain Name should be transferred.