WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PRODUCTOS EFE, S.A. v. Jaime Rentería
Case No. D2000-1810
1. The Parties
The complainant is PRODUCTOS EFE, S.A., a company organized and existing under the laws of the Bolivarian Republic of Venezuela, having its principal place of business in Caracas (the "Complainant"). Its address is 2da Ave. de Los Cortijos de Lourdes, Edif. Centro Empresarial Polar, Caracas, Venezuela. It is represented in this proceeding by Mr. Juan Manuel Raffalli, Esq., Mr. José Manuel Ortega, Esq. and Mr. Ignacio Hellmund, Esq., of Caracas, Venezuela.
The respondent is Mr. Jaime Rentería, an individual person who according with the WHOIS database, has an address at Avenida Urdaneta, Esquina La Pelota, Edificio Plaza, Piso 2, Oficina 2-3, Caracas, DF 1010, Venezuela (the "Respondent").
2. Domain Names and Registrar
The domain names at issue are <heladosefe.com> and <helados-efe.com>, both registered with Network Solutions, Inc. ("NSI), of 505 Huntmar Park Drive, Herndon, Virginia, USA.
3. Procedural History
On December 26, 2000 a complaint according with the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy") and its Rules was submitted to the WIPO Arbitration and Mediation Center (the "Center") in electronic format. On
January 4, 2001 the complaint was received in hard copy. Receipt of the complaint was acknowledged by the Center on December 29, 2000. Following to a notification of complaint deficiency by the Center, on January 12, 2001 the complaint was amended in electronic form, and on January 16, 2001, in hardcopy.
On January 8, 2001, at the Center's request of January 5, 2001, the registrar NSI confirmed that the domain names at issue were registered in the Respondent's name, as well as other record details, inter alia that the service agreement version for the <heladosefe.com> registration was 4.0, and that the version for the <helados-efe.com> registration was 5.0.
On January 18, 2001 the complaint and the commencement of the administrative proceeding were notified by the Center to the Respondent. The deadline for the submission of the response was set for February 6, 2001. The Notification of Complaint included following paragraph:
"6. Default. If your Response is not sent by the above date, you will be considered in default. We will still appoint an Administrative Panel to review the facts of the dispute and to decide the case. The Administrative Panel will not be required to consider a late-filed Response, but will have the discretion to decide whether to do so and, as provided for by Rules, Paragraph 14, may draw such inferences from your default as it considers appropriate. There are other consequences of a default, including no obligation on our part to consider any designations you have made concerning the appointment of the Administrative Panel or to observe any guidelines you have provided concerning case-related communications."
Having failed to submit a response, the Center sent to Respondent a Notification of Respondent Default in electronic form on February 8, 2001.
After having received Roberto A. Bianchi´s Statement of Acceptance and Declaration of Impartiality and Independence, on February 19, 2001 the Center appointed him as a sole panelist. The scheduled decision date was set for March 4, 2001. Thus, the Administrative Panel finds that it has been properly constituted.
On February 19, 2001 the case file was electronically transmitted to the Panel. The case file in hardcopy arrived at the panelist's office on February 23, 2001.
The Panel independently agrees with the Center's assessment that the complaint is in formal compliance with the Policy, the Rules and WIPO’s Supplemental Rules.
There were no other submissions by the Parties. No orders were issued. There were no extensions.
The registration agreements versions 4.0 and 5.0 between Respondent and NSI were executed in English. The complaint was submitted in English. The Panel, seeing no special circumstances to determine otherwise, decides that the proceeding shall continue in English (Rules, Paragraph 11).
4. Factual Background
The following facts and circumstances, contended by Complainant or included in the annexes to the complaint, and undisputed by the defaulting Respondent, are established:
Complainant is the registered owner of the trademark (logo) "EFE" The registration was granted in Venezuela on August 26, 1992, resolution number 100474, for ten years, covering "ice creams". Complainant also owns the trademark "HELADOS MARCA EFE" (which means "Ice creams Brand EFE") in Venezuela, covering "ice creams of all kinds", as evidenced by the certified copy of the certificate of registration, an official translation of which is attached to the complaint. The registration was granted on September 9, 1983, valid until September 9, 1998. Renewal was effected on September 1, 1998 and granted on July 28, 2000, valid until September 15, 2008.
Complainant is also the registered owner of the "EFE" trademark in Aruba (valid until May 13, 2002) for class 30, Bolivia (registration granted for "ice creams of all sorts and kinds" on August 25, 1994 for ten years)., Colombia (granted on December 1993 for ten years for all products of class 30), and Trinidad Tobago (registration granted on April 4, 1995, in force until May 17, 2006 for "substances used as food, or as ingredients in food").
Complainant currently exports its ice cream products to Aruba. In the past it also exported its products to Peru, as evidenced from the export documents also attached.
The ice cream products identified with the "HELADOS MARCA EFE" trademark (logo) have been produced in Venezuela since 1926, having obtained wide recognition both in Venezuela and abroad. Complainant’s ice cream products accounted for approximately sixty percent (60%) of the ice cream market in Venezuela, as of August 1998, which supports Complainant´s allegation of fame for these products.
For many years, the HELADOS MARCA EFE trademark (logo) has been regularly used by the Complainant for marketing purposes in television commercials, having become one of the best known names and logos in the Venezuelan ice cream market.
The Complainant is also the registered owner of the trade name PRODUCTOS EFE, S.A., as evidenced from the certified copy of the respective certificate of registration, issued in Venezuela, dated January 26, 1970 with an attached official translation into English. This registration through several renewals has been extended to
January 26, 2010.
According with the NSI WHOIS database as seen by the panelist on February 24, 2000, Respondent registered the <heladosefe.com> domain name on June 17, 1999, and the <helados-efe.com> domain name on June 28, 2000.
It is clear that Complainant's trademark registrations in Venezuela and elsewhere pre-date Respondent's domain name registrations.
It has been shown by Complainant and is undisputed that Respondent offered the domain names at issue for sale to Empresas Polar (PRODUCTOS EFE, S.A.is part of a group of companies gathered under a holding company called Empresas Polar, C.A.) on the following occasions:
- Letter of June 28, 1999. First contact made by the Respondent with EMPRESAS POLAR, enclosing "...a list of the worldwide Internet domain names, original to your company, made available to you by our company". The Panel after reading the letter's original text in Spanish notes that the phrase "originales de su compañía" has the meaning of "originally belonging to your company" or "originally owned by your company". Mr. Rentería describes his own intentions towards EMPRESAS POLAR as "transparent". A list with the following 20 domain names is enclosed: <empresaspolar.com>, <productospolar.com>,< productos-polar.com>, <cervezapolar.com>, <cerveza-polar.com>, <saboresgolden.com>, <pomar.com>, <pomarreserva.com>, <pomar-reserva.com>, <bodegaspomar.com>, <bodegas-pomar.com>,<harina-pan.com>, <harinapromasa.com>,<ricarepa.com>,<mazorca.com>, <heladosefe.com>, <helados-efe.com>,<mazeite.com>, <arrozprimor.com> y <procria.com>.
- Letter of June 28, 2000. A new letter where Respondent presents itself as responsible for a virtual store of Polar products on the Internet, demanding a price for all the domains, including the "virtual store", of US$ 580,000. The following list of domain names was enclosed: <empresaspolar.com>, <productospolar.com>, <cervezapolar.com>, <cerveza-polar.com>, <saboresgolden.com>, <pomarreserva.com>, <bodegaspomar.com>, <harina-pan.com>, <harinapromasa.com>, <ricarepa.com>,<mazorca.com>, <heladosefe.com>, <mazeite.com>, <arrozprimor.com>. According to Mr. Rentería, these domain names have been re-directed to "virtual store". An e-mail from a Mr. Luis Alvarez E. was included, where an interest in buying rights over mazorca.com is shown.
- Letter of that same date, adding new domains to the offer and stating: "These domains, being of first order, such as the case of <pomar.com> and <procria.com>, are highly sought on the international market, making them commercially and strategically valuable for any company". The domain names are: <pomar.com>, <procria.com>, <productos-polar.com>, <pomar-reserva.com>, <bodegas-pomar.com> and <helados-efe.com>. Respondent concludes by offering a "special price of US$ 80,000" for the six domain names.
- Letter of December 5, 2000, in which a special "40 % - off discount" is now offered for the sale of all 20 domain names at a total amount of US$ 348,000 (US$ 17,400 for each domain name). The full list of the enclosure to the first letter is repeated.
The Panel notes that the amount required by Respondent for the sale of each domain name far exceeds any thinkable out-of-pocket registration costs.
The domain name registration agreements provide by reference that Respondent submits to the ICANN Uniform Domain Name Dispute Resolution Policy (The "Policy"). The defaulting Respondent has not challenged the Panel's jurisdiction.
5. Parties’ Contentions
A) The Complainant
Complainant contends that the domain names are identical or similar to the extent of creating confusion in respect of the trademarks or service marks on which the complainant holds rights; that Respondent has no legitimate rights or interests in respect of the domain names. omplainant has given no license, authorization, consent or permission, or authorization to register or apply for the domain names at issue. There is no business or commercial relationship of any nature between Complainant and Respondent. Respondent was never known as HELADOS EFE, has no business in connection which such words, and does not manufacture any products under HELADOS EFE. The domain names were registered and are used in bad faith. In 1999 Respondent contacted Complainant´s legal counsel by telephone and offered for sale the domain names that he registered a couple of days earlier. Respondent's offer was declined by Complainant. Respondent's offer to sale the domain names was related to 20 domain names corresponding to trademarks owned by PRODUCTOS EFE, S.A., CERVECERÍA POLAR LOS CORTIJOS, C.A., PEPSI-COLA DE VENEZUELA, C.A., BODEGAS POMAR, C.A., REFINADORA DE MAÍZ VENEZOLANA, C.A. and C.A. PROMESA.
Respondent has registered many other domain names corresponding to third parties´ marks such as <cruz-roja.com>, <eteron.com>, <eteron.net>, <loteriadeoriente.com>, <loteriadecaracas.com>, <loteriadelzulia.com>, <prolicor.com>, <pro-licor.com>, <gacetahipica.com>. Respondent is the technical contact in the domain name registrations of <tiorico.com> (second largest ice cream producer in Venezuela) and <meridianotv.com>, a Venezuelan sports television network. Additionally, Respondent was also the respondent in WIPO Case D2000-0050 (related to four domain names). Other contentions of Complainant are referred to in 4 above.
B) The Respondent
Respondent is in default. In case of a default, under Rules, Paragraph 14(a), the panel "shall proceed to a decision on the complaint", and under Paragraph 14(b) the panel "shall draw such inferences therefrom as it considers appropriate". Such provisions would indicate that the Complainant´s assertions are sufficient ground for the Panel to proceed to a default decision in its favor. However the Policy does not allow to extract such an automatic consequence, because "the complainant must prove that each of these three elements are present" (Policy, Paragraph 4(a) in fine).
6. Discussion and Findings
Identity or Confusing Similarity
Complainant has abundantly proved its rights on the EFE (logo) and HELADOS MARCA EFE (logo) marks in Venezuela and elsewhere. Their applications and registrations pre-date the registration of the domain names at issue. See 4 supra. A comparison between the domain names and Complainant´s EFE (logo) and HELADOS MARCA EFE (logo) marks results in a finding of confusing similarity.
If the comparison is made with the EFE mark, as "HELADOS" means "ice-creams", the addition of such generic term does not make the <heladosefe.com> and <helados-efe.com> domain names less different from Complainant´s marks. Instead, the addition of "helados" reinforces, by association, the overall impression of confusing similarity. Additionally, if one chooses the HELADOS MARCA EFE (logo) trademark the confusion is still more evident, for the same reason and because the Spanish word "MARCA" means "mark", which is a very weak part of the combined trademark.
Thus, Complainant has succeeded in showing that the first limb of the Policy is present for both domain names (Policy, Paragraph 4(a)(i)).
Lack of Rights and Legitimate Interests
Complainant contends that Respondent lacks rights or legitimate interests in the domain names. Respondent, by its default, has chosen not to present the Panel with any allegations or documents in its defense or favor despite its burden under Rules, Paragraph 5(b)(i) and 5(b)(ix), or the consequences that a panel may extract from the fact of a default (Policy, Paragraph 14). In particular, Respondent has failed to contend that any of the circumstances described in Policy, Paragraph 4(c) - or any other circumstance - is present in its favor.
An independent connection to the Web by this acting panelist was conducted on February 24, 2001, and delivered following results:
www.heladosefe.com resolved into a HTTP "403" message ("You are not authorized to see this page"). www.helados-efe.com delivered the texts "the page cannot be shown" and "the server could not be found", a DNS-error.
This means that for all practical purposes the web sites under both domain names at issue are not being used, or that Respondent is not providing access to the corresponding web pages to any Net surfer. Whatever the reason, this lack of use does not allow, by Respondent's default, to conclude anything favorable to Respondent, particularly in relation to the Policy, Paragraphs 4(c)(i) or 4(c)(iii). Nor has the defaulting Respondent stated that he is "commonly known" by the domain names (Policy, Paragraph 4(c)(ii)), an allegation that would anyway have been fruitless since there is no connection whatever between the domain names and the name of the registrant-Respondent Mr. Javier Rentería. In the case of the <helados-efe.com> domain name it would have been particularly difficult to accept that Respondent could have any rights of legitimate interests, since Respondent offered it for sale on the same day of the registration.
Under these circumstances the Panel cannot but conclude that Complainant is right that Respondent lacks rights or legitimate interests in the domain names (Policy, Paragraph 4(a)(ii).
Registration in Bad Faith
It has been sufficiently evidenced that Respondent offered the domain names for sale to Empresas Polar for an amount by far exceeding out-of-pocket costs connected with the registration of the domain names.
Having in mind that Respondent lacks any rights or legitimate interests in the domain names, this offer is self-explanatory that the primary purpose of Respondent at the time of registration was to obtain an illegitimate, huge profit at Complainant´s cost, which is the circumstance of bad faith registration described in Policy, Paragraph 4(b)(i) stating:
"circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name".
As pointed out in the complaint, Mr. Rentería was the respondent in WIPO Case D2000-0050 The British Broadcasting Corporation v. Jaime Renteria, March 23, 2000 (the disputed domain names were <bbcdelondres.com>, <bbcenespanol.com>, <bbcenespanol.net> and<bbcenespanol.org>). In that case the learned panelist found that "bad faith registration and use is established by the fact that the Respondent offered to sell the domain name as part of a package of domain names for US$ 75,000", and a decision of transfer to the complainant was rendered. Respondent's conduct is nearly the same in the present case.
The Panel cannot overlook the fact that Mr. Rentería is the registrant-respondent in the following WIPO Cases:
- D2000-1808 (<pomar.com>, <bodegaspomar.com>, <bodegas-pomar.com>, <pomarreserva.com> and <pomar-reserva.com>),
- D2000-1810 (<heladosefe.com> and <helados-efe.com>,
- D2000-1811 (<saboresgolden.com>),
- D2000-1812 (<empresaspolar.com>, <productospolar.com>, <productos-polar.com>, <cervezapolar.com> and <cerveza-polar.com>), and
- D2000-1814 (<harina-pan.com>, <mazeite.com>, <procria.com>, <arrozprimor.com>, <mazorca.com>, <harinapromasa.com> and <ricarepa.com>).
The five cases are presently under examination by this acting panelist. Although the cases are independent, in all of them a finding of identity/confusing similarity, lack of Respondent's rights or legitimate interests in the domain names, bad faith registration and bad faith use has been made by the Panel. In all these cases the Panel honors the complaints by granting the remedy of transfer of the domain names registrations to the complainant. The aggregate number of domain names disputed in the five cases, registered by Mr. Rentería and reflecting marks owned by third parties belonging to or controlled by EMPRESAS POLAR amounts to twenty.
All this shows that Mr. Rentería has specially aimed at the EMPRESAS POLAR group in attempting to illegitimately extract profit at selling the domain names. Together with the domain names challenged in the BBC case, Mr. Renterías´s registrations of third parties´ trademarks as domain names amount at least to twenty-four. This means that Mr. Rentería has clearly engaged in a "pattern of such conduct" and also incurred in the circumstance of bad faith registration described in Policy, Paragraph (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".
Therefore the Panel finds that Complainant has made out its case, that Respondent registered the domain names in bad faith (Policy, Paragraphs 4(b)(i) ,4(b)(ii) and 4(a)(iii)).
Use in Bad Faith
Respondent, under its www.procria.com web site, used the domain names at issue in that Respondent offered them for sale. This has apparently ceased at present. Together with the offer for sale contained in Respondent's letters to EMPRESAS POLAR (see 4 above) the Panel is satisfied by Complainant´s allegation, uncontested by Respondent, that the offer for sale is also a use in bad faith of the domain names by Respondent Mr. Rentería. See WIPO Cases D99-0001 World Wrestling Federation v. Michael Bosman, January 14, 2000, and D00-0001 Robert Ellenbogen v. Mike Pearson, February 2000, D2000-0050 (which includes Mr. Rentería as respondent) and many other WIPO decisions where an offer for sale was found to be a bad faith use of the domain name.
Complainant has succeeded in proving bad faith use of both domain names at issue (Policy, Paragraph (a)(iii).
Mr. Rentería´s domain name registrations and offer for sale is typical cybersquatting and abuse of the sort disallowed by the Policy.
The Panel has found that both domain names at issue are confusingly similar to Complainant´s trademarks, that Respondent lacks rights or legitimate interests in said domain names, and that such domain names were registered and are being used in bad faith. Therefore, pursuant to Policy, Paragraph 4(i) and Rules, Paragraphs 14 and 15, the Panel requires that the registrations of the <heladosefe.com> and <helados-efe.com> domain names be transferred to the Complainant PRODUCTOS EFE, S.A.
Roberto A. Bianchi
Dated: March 2, 2001