WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pepsi-Cola De Venezuela, C.A. F/K/A Sociedad Productora De Refrescos Y Sabores, C.A. (Sopresa) v. Jaime Rentería
Case No. D2000-1811
1. The Parties
The complainant is PEPSI-COLA DE VENEZUELA, C.A. f/k/a SOCIEDAD PRODUCTORA DE REFRESCOS Y SABORES, C.A. (SOPRESA), a company organized and existing under the laws of the Bolivarian Republic of Venezuela, incorporated and 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 Name and Registrar
The domain name at issue is <saboresgolden.com>, 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 notification of complaint deficiency by the Center of January 10, 2001, 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 name at issue was registered in the Respondent's name, as well as other record details.
On January 18, 2001 the amended complaint and the commencement of the administrative proceeding were notified by the Center to the Respondent.
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 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 of January 18, 2001 that the complaint is in formal compliance with the Policy, the Rules and WIPO’s Supplemental Rules.
There were no other submissions of the Parties. No orders were issued. There were no extensions.
The registration agreement between Respondent and NSI was 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 was originally incorporated under the corporate name SOCIEDAD PRODUCTORA DE REFRESCOS Y SABORES, C.A. (SOPRESA). Such name was later changed into PEPSI-COLA DE VENEZUELA, C.A. Most of Complainant’s trademarks referred to in the complaint are originally registered in the name of GOLDEN CUP SABORES Y MARCAS, C.A., an affiliate of Complainant which merged into Complainant. Complainant is the registered owner of the trademark "GOLDEN" in Venezuela, Reg. No. P-192.081 on October 31, 1996, valid to date, covering beers, mineral waters and soft drinks, and other non-alcoholic beverages, etc. The trademark identifies several Venezuelan soft drinks with kola, orange, apple, grape and pineapple flavors.
The mark is also registered by Golden Cup, Sabores y Marcas, C.A. for services of the class 42. All such GOLDEN soft drink products, collectively, are commonly identified as "Sabores Golden", which means "Golden flavors". GOLDEN soft drink products are being produced since approximately 1948, having obtained wide recognition in Venezuela, and accounting for an important share of the consumption of soft drinks in Venezuela. For many years, the GOLDEN trademark has been regularly used by the Complainant for marketing purposes in television commercials, having become one of the best known trademarks in the Venezuelan soft drinks market.
According with the NSI WHOIS database as seen by the panelist on
February 25, 2000, Respondent registered the <saboresgolden.com> domain name on June 17, 1999.
It is clear that Complainant's trademark registrations in Venezuela and elsewhere pre-date Respondent's domain name registration.
It has been shown by Complainant and is undisputed that Respondent offered the domain name at issue for sale to Empresas Polar (Empresas Polar, C.A. is the holding company of Complainant within a group of companies) 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 himself 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 agreement 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 Respondent’s domain name uses the word "GOLDEN" and is confusingly similar to Complainants’ GOLDEN trademark. Respondent has no legitimate rights or interests in respect of the domain name. Complainant has given no license, authorization, consent or permission to use the mark, or authorization to register or apply for the domain name at issue. There is no business or commercial relationship of any nature between Complainant and Respondent. Respondent was never known as GOLDEN or SABORES GOLDEN, has no business in connection which such words, and does not manufacture any products under such name. The domain name was registered and is 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>, etc. 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. Respondent registered cantvservicios.com and cantvservicios.net (name of the largest Venezuelan Internet access provider), disneylatina.com and disney-toys.com (names intended to capitalize on the value of Walt Disney’s trademarks). Additionally, Respondent was the respondent in WIPO Case D2000-0050 (related to four domain names).
In addition, after Complainant decided not to purchase the domain names offered by Respondent, Respondent activated a web site linked to the URL "http:\\www.saboresgolden.com" from which it offered for sale Complainant’s products. Respondent activated such web site without Complainant’s consent and without purchasing those products directly from Complainant.
Respondent used the domain name at issue to attempt to attract internet users to its web site for commercial gain, by creating a likelihood of confusion with Complainant’s GOLDEN trademark, as to the source, sponsorship, affiliation and/or endorsement of Respondent’s web site. Respondent’s web site misled and induced internet users into thinking that the web site was administered, promoted, sponsored or endorsed by Complainant. As evidenced from the printout attached to the complaint, in the web site referred to above Respondent used the registered trademark and logos of Complainant and Complainant’s affiliates.
Other contentions of Complainant are referred to in 4 and 6.
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 sufficiently proved its rights in the GOLDEN mark in Venezuela. Its application and registration pre-date the registration of the domain name at issue. See 4 supra. A comparison between the <saboresgolden.com> domain name and Complainant´s GOLDEN mark results in a finding of confusing similarity. The addition of the SABORES term in the domain name does not distinguish it from the mark, because "sabores" is the common term used in the Venezuelan market to refer to different tastes of soft drinks manufactured by companies like Complainant´s. In fact, the addition of SABORES reinforces, by association, the impression of confusion with Complainant´s mark.
Thus, Complainant has succeeded in showing that the first limb of the Policy is present (Policy, Paragraph 4(a)(i)).
Lack of Rights and Legitimate Interests
Complainant contends that Respondent lacks rights or legitimate interests in the domain name. 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 25, 2001, and showed that www.saboresgolden.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 site under the domain name at issue is not being used, or that Respondent is not providing access to the corresponding web page 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 name (Policy, Paragraph 4(c)(ii)), an allegation that would anyway have been fruitless since there is no connection whatsoever between the domain name and the name of the registrant-Respondent
Mr. Javier Rentería.
Complainant is right that Respondent lacks rights or legitimate interests in the domain name (Policy, Paragraph 4(a)(ii).
Registration in Bad Faith
It has been sufficiently evidenced that Respondent offered the domain name for sale to Complainant and Empresas Polar for an amount by far exceeding out-of-pocket costs connected with the registration of the domain name.
Having in mind that Respondent lacks any rights or legitimate interests in the domain name, 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. However, in this case Mr. Rentería registered <saboresgolden.com>, and not any <golden> second level domain name under ".com", ".net" or ".org". Although Mr. Rentería has clearly engaged in a "pattern of such conduct" in relation to other domain names and marks, in the present case he has apparently not incurred in the circumstance of bad faith registration described in Policy, Paragraph 4(b)(ii), and has not prevented Complainant to reflect "the mark in a corresponding domain name". Complainant´s mark is GOLDEN and not SABORES GOLDEN.
In any case the Panel finds that Complainant has succeeded in proving that Respondent registered the domain name in bad faith (Policy, Paragraphs 4(b)(i) and 4(a)(iii)).
Use in Bad Faith
The Panel accepts Complainant allegation, uncontested by Respondent, that Respondent activated a web site linked to the URL "http:\\www.saboresgolden.com" from which it offered for sale Complainant’s products. Respondent activated such web site without Complainant’s consent. This has apparently ceased at present but Respondent´s conduct is sufficient to establish that Respondent incurred in the circumstance of bad faith use as described in Policy, Paragraph 4(b)(iv), stating:
"by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
Respondent also used the domain name at issue in that Respondent offered it for sale to Complainant and to its owning or controlling company, EMPRESAS POLAR. The Panel is satisfied by Complainant´s allegation, uncontested by Respondent, that the offer for sale is also an use in bad faith of the domain name by Respondent. 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 (where Mr. Rentería is the 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 the domain name at issue (Policy, Paragraphs 4(b)(i), 4(b)(iv) and 4(a)(iii).
Mr. Rentería´s domain name registration and offer for sale is typical cybersquatting and abuse of the sort disallowed by the Policy.
The Panel has found that the domain name at issue is confusingly similar to Complainant´s trademark, that Respondent lacks rights or legitimate interests in said domain name, and that the domain name was registered and is being used in bad faith. Therefore, pursuant to Policy, Paragraph 4(i) and Rules, Paragraphs 14 and 15, the Panel requires that the registration of the <saboresgolden.com> domain name be transferred to the Complainant PEPSI-COLA DE VENEZUELA, C.A.
Roberto A. Bianchi
Dated: March 2, 2001