WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bodegas y Bebidas, S.A. v. Eduardo Duro García
Case No. D2000-1815
1. The Parties
1.1. The Complainant is Bodegas y Bebidas, S.A. incorporated in San Sebastián, Spain
1.2. The Respondent is Eduardo Duro García, resident in Santa Cruz de Tenerife, Canary Islands, Spain.
2 The Domain Name and Registrar
2.1 The domain name subject-matter of this Complaint is <bodegasybebidas.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 27, 2000, and the hardcopy of the Complaint submitted by courier was received by the WIPO Center on December 29, 2000. An Acknowledgement of Receipt dated December 29, 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 January 4, 2001. The Registrar responded by e-mail to the WIPO Center on January 9, 2001.
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
January 10 2001, by courier, fax and e-mail. No Response was filed by the Respondent. The WIPO Center proceeded to notify the respondent’s default on January 30, 2001.
3.4 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 February 9, 2001. Therefrom, a decision shall be provided by this Administrative Panel, absent exceptional circumstances, by February 22, 2001.
3.5 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 owns two Spanish registered product trademarks, one in class 32 -no. 822.161-, and the other in class 33 -no. 822.162-, both consisting of the denomination "B&B BODEGAS Y BEBIDAS", as well as a registered business name -no. 155095- "BODEGAS Y BEBIDAS" used to identify the company.
4.2 The Respondent owns the domain name <bodegasybebidas.com>, registered through Network Solutions, Inc. The domain name is not in use, that is to say, there is no web page under this domain name.
5 Parties’ Contentions
5.1. The Complaint
5.1.1 The Complainant contends to own two trademarks and a business name with the words "BODEGAS Y BEBIDAS", all of them to distinguish drinks, alcoholic drinks and its business subject matter: vine harvest and exploitation, as well as manufacturing, purchase and sale of any type of wine.
5.1.2. The Complainant contends that there is identity between the Complainant’s trademarks and business name, and the domain name subject to this procedure, which clearly generates a very high risk of confusion among consumers.
5.1.3. The only item not included in the domain name is the denominational initials "B&B" which does not entail a difference sufficient to justify a possible lack of similarity. In any case, the identity with the registered business name, which does not include de denominational initials, is absolute.
5.1.4. The Complainant states that the Respondent through use of these trademarks, is identified by the public as this leading company in his activity.
5.1.5. The Complainant contends that the Respondent, as is recorded and verified by the database research conducted before the Spanish Patent and Trademark Office, holds no legitimate right or interest whatsoever to use the name "bodegas y bebidas".
5.1.6. The Complainant contends that the Respondent’s ultimate purpose is strictly to benefit financially from an eventual future transfer of the domain name. This can be verified by the sale offered by the defendant to Bodegas y Bebidas, S.A.’s representative.
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.
6.2 Fulfilment of the requirements according to the Policy, Paragraph 4 a):
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 evident, generating a clear risk of confusion. Moreover, the absence of the initials "B&B" is not enough to justify the existence of a substantial difference that eliminates the risk of confusion.
b) The Complainant considers that its trademarks identify the Complainant as a leading company in the market before the public, but has not proved that its trademarks are well known in the Spanish market sector where the Complainant undertakes its activity. In any case, although this would strengthen the position of the owner of the trademark in a domain name dispute, for the UDRP to be applicable it is not necessary that the trademark at stake be well known.
6.2.2 Respondent’s rights or legitimate interests in the Domain Name
a) This panel has visited the site "www.bodegasybebidas.com" and found it does not exist. Therefore, the domain name is not in use, nor there seems to be serious arrangements for its use.
b) Not having even replied to the Complaint, the Respondent has not justified any legitimate interest on the disputed domain nor fair use of it.
c) The Panel considers that the Respondent has not been commonly known before by the domain name, and has no authorization or license from the legitimate rights holder of such denomination, given that the Respondent has not opposed to the statements of the Complainant in this sense.
6.2.3 Domain Name registered and used in bad faith
a) 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) In fact, the Complainant provides with an e-mail (as exhibit annex E) sent to the Respondent on September 21, 2000, inquiring for information about the domain name. Apparently, the Respondent replies saying "the price is 8000 euros, regards". The reliability of the document is very low. Nevertheless, given that the Respondent has not replied to the Complainant, and has not opposed to the said document, the Panel must render it valid.
c) Therefore, the Panel concludes that the domain name has been registered with the purpose of selling it for a price very superior to the cost.
d) 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 and blocks its possibility of a complete development on the net disturbing its activity.
In view of the above circumstances and facts, the Panel decides that the domain name <bodegasybebidas.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 <bodegasybebidas.com> be transferred to Complainant.
Mario A. Sol Muntañola
Dated: February 22, 2001