WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ferrovial Agromán, S.A. and Grupo Ferrovial, S.A. v. Residencial La Vaguada, S.L.
Case No. D2001-0018
1. The Parties
The Complainants are FERROVIAL AGROMAN, S.A. and GRUPO FERROVIAL, S.A. The first company is a Spanish company with domicile in Avenida del Partenón 4, Campo de las Naciones, 28042, Madrid, Spain; the second company is also a Spanish company with domicile in Príncipe de Vergara 135, 28002, Madrid, Spain. Both companies will be referred hereinafter to as the Complainants. The Respondent is the company Residencial La Vaguada, S.L. with domicile in Loma de Canteras 12, 30394 Cartagena, Murcia, Spain (hereinafter, the Respondent).
2. Domain Names and Registrar
The domain names at issue are <ferrovial-agroman.net> and <ferrovialagroman.com>. The Registrar is NETWORK SOLUTIONS, Inc. (hereinafter, the Registrar) with domicile in 505 Huntmar Park Drive, Herndon, VA 20170, USA.
3. Procedural History
The WIPO Arbitration and Mediation Center (hereinafter, the Center) received the Complaint by e-mail on January 4, 2001 and in hardcopy on January 10, 2001. On January 9, 2001 the Center sent the acknowledgement of Receipt to the parties as well as to the Registrar.
On January 10, 2001, the Center sent the request to the Registrar for the verification of the particulars of the domain names at issue. The request was answered on
January 12, 2001. The Registrar confirmed (i) that it was in receipt of the Complaint; (ii) that the domain name at issue had been registered through the Registrar; (iii) that the current Registrant is the Respondent; (iv) the administrative contact person’s and others’ details; (v) that the domain name is in "Active" status.
After verifying that the Complaint meets with the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (hereinafter, the Policy), the Rules and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter, "the Rules" and "the Supplemental Rules" respectively), the Center sent the Respondent a notification under Paragraph 2 (a) of the Rules together with copies of the Complaint on January 17, 2001. The same notification was sent to the administrative contact, technical contact, zone contact and billing contact, as required by Paragraph 2(a) of the Rules. The notification was communicated by post/courier (with enclosures), by fax (complaint without attachments) and e-mail (Complaint without attachments). Both the Complainants and the Registrar were also notified of the initiation of the proceedings in accordance with the Policy and the Rules.
The Respondent did not answer the Complaint. Accordingly the Center sent the parties the Notification of the Respondent’s Default on February 6, 2001.
On February 19, 2001, after receiving his completed and signed Statement of Acceptance and Declaration of Impartiality and Independence, the Center appointed
Mr. Jose Carlos Erdozain as the single member of the Administrative Panel (hereinafter, the Panelist) in accordance with Paragraph 6(f) of the Rules. At the same date, the Center notified both the Complainants and the Respondent of the appointment of the Panelist.
The date scheduled for the issuance of the Panel’s decision is before March 4, 2001.
The language of the proceeding is English.
4. Factual Background
Firstly, it must be stressed that both Complainants are economically linked. GRUPO FERROVIAL, S.A. appears as the head of a group of companies, whereas FERROVIAL AGROMAN, S.A. is the most important subsidiary of the group.
Likewise, GRUPO FERROVIAL, S.A. is the legal owner of the trademarks and domain names which base the Complaint. FERROVIAL AGROMAN, S.A. is user, not owner, of those trademarks and domain names concerned in its activity.
GRUPO FERROVIAL is one of the largest construction companies in Spain. The importance of the Complainants in the Spanish and European market is based not only in its revenues, which amounted in 1999 up to € 2,65 billion, but also in the different sectors of industrial activity towards which the Complainants focus. These sectors are related to the construction, transport infrastructure concessions and housing developers.
GRUPO FERROVIAL was incorporated in the 50s, and ever since it has developed mainly into the construction area of business. It was elected to carry out projects of importance such as that of Expo 92 and of Barcelona Olympiads. GRUPO FERROVIAL has constructed more than 8,000 kms. of roads and freeways, 1,400 kilometres of highways. In addition, it has improved more than 20,000 kms. of roads. GRUPO FERROVIAL has also undertaken the construction of water infrastructures and it has presence in areas other than the construction. As a matter of fact, this Complainant has obtained infrastructure concessions (development and maintenance of car parks); it manages real estate projects (housing development); services (solid urban waste collection, integrated water management) and telecommunications (this Complainant has acquired a percentage of one of the major telecommunications companies in the Spanish market).
GRUPO FERROVIAL is known throughout Europe and all over the world.
AGROMAN EMPRESA CONSTRUCTORA, S.A. (AGROMAN) was incorporated in the last 20s. The actual FERROVIAL AGROMAN, S.A. has been formed in 1999 as a result of the split-off of the construction business unit of the company FERROVIAL, S.A. and its further contribution to the company AGROMAN EMPRESA CONSTRUCTURA, S.A. Simultaneously, AGROMAN EMPRESA CONSTRUCTURA, S.A. modified its corporate name to FERROVIAL AGROMAN, S.A.
FERROVIAL AGROMAN, S.A., as subsidiary of GRUPO FERROVIAL, S.A., undertakes most of the constructions and projects (railway infrastructure, hydraulic works, etc.) in which GRUPO FERROVIAL takes part.
The Complainants base the Complaint on the ownership of trademarks and trade names in favour of GRUPO FERROVIAL, S.A. They have been registered before the Spanish Patent and Trademark Office (hereinafter, the SPTO). The Complainants have attached certificates of the foregoing trademarks registrations.
These certificates have been attached as Annex 3 to the Complaint. I shall only quote some of them as follows:
- "FERROVIAL AGROMAN", requested on July 16, 1999 and granted on February 7, 2000 (Class 4) with registration number 2.247.921.
- "FERROVIAL AGROMAN", requested on July 16, 1999 and granted on
July 5, 2000 (Class 6) with registration number 2.247.922.
- "FERROVIAL AGROMAN", requested on July 16, 1999 and granted on
July 5, 2000 (Class 7) with registration number 2.247.923.
- "FERROVIAL AGROMAN", requested on July 16, 1999 and granted on
July 5, 2000 (Class 11) with registration number 2.247.924.
Furthermore, the Complainants refer to the trademarks registrations concerning the sign "FERROVIAL" and "AGROMAN" that have been registered before the SPTO. I shall only quote some of those registrations as follows:
- "FERROVIAL", registered on February 23rd, 1977 (Class 1) with registration number 724.267.
- "FERROVIAL", registered in 1977 (Class 19) with registration number 724.275.
- "FERROVIAL", registered on March 21, 1977 (Class 35) with registration number 724.276.
- "FERROVIAL", registered on November 4, 1994 as a denominative trademark (Class 42) with registration number 1.734.973, and as figurative trademark (Class 42) with registration number 1.734.974.
The Complainants have also proved that GRUPO FERROVIAL, S.A. is owner of registrations of the trademark "FERROVIAL" in many classes as a figurative and denominative trademark.
The Complainant FERROVIAL AGROMAN, S.A. is owner of the following trademarks that have been registered before the SPTO. Some of them shall be quoted:
- "AGROMAN", registered on November 21, 1988 (Class 6) with registration number 1.216.069.
- "AGROMAN", registered on November 2, 1988 (Class 37) with registration number 1.216.083.
- "AGROMAN", registered on October 3, 1988 (Class 39) with registration number 1.216.085.
- "AGROMAN", registered on December 5, 1988 (Class 42) with registration number 1.216.087.
GRUPO FERROVIAL is owner of the following international trademark:
- "FERROVIAL", registered on September 17, 1993 (Class 37) with effects in Germany, Austria, Belgium, Holland, Luxembourg, Russia, France, Hungary, Italy, Morocco, Poland and Portugal, with registration number 608.088.
GRUPO FERROVIAL has requested the following distinctive signs as CTM:
- "FERROVIAL AGROMAN", requested on July 19, 1999 (Class 37) with request number 1.245.786.
GRUPO FERROVIAL, S.A. is the owner of the following trademarks in countries other than Spain:
- "FERROVIAL", registered in Argentina on December 19, 1995 (Class 37) with registration number 1.585.638.
- "FERROVIAL", registered in Colombia on July 31, 1995 (Class 37) with registration number 178.030.
- "FERROVIAL", registered in the United Kingdom on January 12, 1993 (Class 37) with registration number 1.523.983.
- "FERROVIAL", registered in Mexico on May 25, 1995 (Class 37) with registration number 492.851.
FERROVIAL AGROMAN, S.A. is owner of the following trademarks, which have been registered before the SPTO:
- "F&A FERROVIAL AGROMAN INTERNACIONAL", registered on September 22, 1997 (Class 16) with registration number 2.079.954.
- "F&A FERROVIAL AGROMAN INTERNACIONAL", registered on September 22, 1997 (Class 17) with registration number 2.079.955.
- "F&A FERROVIAL AGROMAN INTERNACIONAL", registered on September 22, 1997 (Class 19) with registration number 2.079.956.
- "F&A FERROVIAL AGROMAN INTERNACIONAL", registered on August 20, 1997 (Class 35) with registration number 2.079.957.
- "F&A FERROVIAL AGROMAN INTERNACIONAL", registered on August 20, 1997 (Class 36) with registration number 2.079.958.
- "F&A FERROVIAL AGROMAN INTERNACIONAL", registered on August 20, 1997 (Class 37) with registration number 2.079.959.
Likewise, GRUPO FERROVIAL, S.A. is the registrant of the following domain names <ferrovial.com>, <ferrovial.es>, <grupoferrovial.com>, <ferrovialagroman.org>, <ferrovialagroman.net> y <ferrovial-agroman.org> (see Annex 4 to the Complaint).
According to Annex 7 of the Complaint, it seems that the Defendant’s activities are related with the promotion, construction and exploitation of real estates. In fact, according to Annex 6 of the Complaint, the Defendant is the owner of many domain names in which the word <inmobiliaria> (i.e. real estate company) appears. However, the Respondent has not submitted a Response to specify them.
5. Parties’ Contentions
5.1 Complainants contend that:
a) The domain names <ferrovial-agroman.net> and <ferrovialagroman.com> are identical and therefore confusingly similar to the various trademark registrations FERROVIAL, AGROMAN and many others where those words are contained or combined that are registered in favour of the Complainants as previously stated.
b) The Respondent does not have any right or legitimate interest in the domain names <ferrovial-agroman.net> and <ferrovialagroman.com> due to the following:
i) The Respondent has no relationship with the Complainants.
ii) The Respondent has not been known under the domain names, or under any other related name to such domain names.
iii) The Respondent is not using, nor are there any demonstrable preparations to use the domain names <ferrovial-agroman.net> and <ferrovialagroman.com>.
iv) The Respondent does not own any right to the trademarks FERROVIAL, AGROMAN.
v) The Complainants have not licensed or otherwise permitted the Respondent to use any of its trademarks, nor has it licensed to apply for the registration of the domain names at issue.
c) The domain names <ferrovial-agroman.net> and <ferrovialagroman.com> were registered and are being used in bad faith, due to:
i) The Respondent has registered the domain names to impede the Complainants a fair and legitimate use of the virtual space of the domain names.
ii) The lack of any content within the Web Sites corresponding to the domain names at issue, which prevents the Complainants from making legitimate use of those domain names.
iii) The passive attitude regarding the Web Sites linked to the domain names <ferrovial-agroman.net> and <ferrovialagroman.com> must be judged as a cause of bad faith.
iv) The Defendant is trying to attract for commercial gain Internet users to the Web Sites corresponding to the domain names at issue, since the activity of the Defendant focuses on the real estate field where the Complainants do also develop some activity.
v) The words FERROVIAL and AGROMAN are invented words. They are not similar to any service or good, not they can be considered as generic.
5.2. Respondent did not answer to the Complaint
Duly notified of the Complaint, the Respondent did not answer it.
6. Discussion and Findings
The Policy sets forth in Paragraph 4 (a) the cumulative elements that the Complainants must prove in order to succeed in an administrative proceeding for abusive domain name registration and use. I shall examine each one of these elements in the following items:
"4.a. (i) Identity or Confusing Similarity"
This requirement needs that the domain names are compared with the trademarks or any other legitimate right owned by the Complainants. There will be identity or confusing similarity as long as the subjective decision of an impartial observer considers so. This decision is issued on the grounds of various criteria. Firstly, there is identity if both distinctive signs are the same or are formed substantially as of the same words. Secondly, the domain name is confusing similar if it is similar to the trademark or trade name of the Complainants in such a way that there is a risk of confusion in the public as to the true origin of the ownership of the domain names, products or services of the Complainants. This risk may be due to a substantial identity between the words of the Complainants’ trademarks and the Respondent’s domain names.
It cannot be relevant the generic TLD particle. The particles <com>, <org> or <net> are not relevant to establish the comparison, since they do not give any particularity or difference to the domain name chosen by the registrant. Those particles are usually used to make a difference of the sectors and activities advertised through the domain name. In the practice, however, this purpose has failed, since registrants do dedicate the Web Sites to activities other than those initially intended under the TLD particles.
In the domain names <ferrovial-agroman.net> and <ferrovialagroman.com> the words <ferrovial> and <agroman>, either together or separated with a hyphen, are the fundamental phonetic base to form said domain names. As a result, those domain names are confusingly similar to the trademark <F&A FERROVIAL AGROMAN INTERNACIONAL>, since the words <F&A> and <INTERNACIONAL> do not add any specification or particularisation to the distinctiveness of the name.
It is not necessary that both trademarks are owned by just one person, if both owners belong to the same industrial group or are economically linked by the same economic management. As previously stated in the decision of the case D2000-0980, the owner of the trademark/s involved can arrange into the administrative proceeding the ownership of the disputed domain name in favour of any person as long as the transferee is part to the proceeding.
In addition, the protection must be granted irrespective of the fact that the only sign similar to the domain names (i.e. FERROVIAL AGROMAN) is an application of CTM submitted in 1999, which has not been granted so far. On the contrary, in being formed the application of that trademark as of the combination of the trademarks FERROVIAL and AGROMAN, which have been actually granted, it should be presumed that the application of the CTM shall be finally granted. This is a presumption iuris tantum that the Complainants have a potiur iure to use the words FERROVIAL and AGROMAN, together or combined. All in all, the Complainants have also proved that GRUPO FERROVIAL, S.A. is the owner of the trademark <FERROVIAL AGROMAN>.
The use and registration of all of these trademarks is previous to the registration of the domain names at issue. In any event, the protection granted to trademark owners commence from the moment of the submission of the application and not as of the moment of the final grant of the relevant administrative body.
Finally, the confusing similarity is much more evident in the light of the kind of activity carried out by the Respondent: promotion and exploitation of real estates, which is an activity also undertaken by the Complainants.
Taking into account the above mention criteria as well as the notorious activity of the Complainants, there is no reason to consider that the trademark FERROVIAL and AGROMAN, duly registered by the Complainants, are not identical to the domain names <ferrovial-agroman.net> and <ferrovialagroman.com>.
In conclusion, the requirement of Paragraph 4.a.(i) is met.
"4.a.(ii) Absence of Respondent Rights or Legitimate Interest in the Domain Names <ferrovial-agroman.net> and <ferrovialagroman.com>
The absence of rights or legitimate interest of the Respondent in the domain names <ferrovial-agroman.net> and <ferrovialagroman.com> is revealed through different ways. The significance of this requirement is to show that there is not any reason why the Defendant should use fairly or is entitled to use the domain names. The absence of right or legitimate interest is the premise of the use of the domain names in bad faith.
There are many criteria to find out whether the Respondent has no right or interest in the use of the domain names: existence of a trademark or any other legitimate right in favour of the Respondent; active or passive attitude of the Respondent in order to defend his domain name or even applications for registration of trademarks or any other legitimate right.
The domain name <ferrovial-agroman.net> and <ferrovialagroman.com> are not similar to whole or part of the Respondent’s corporate name, or any of his trademarks or trade name.
The Respondent has not proved to have any legitimate interest or right in the words of the domain names <ferrovial-agroman.net> and <ferrovialagroman.com>. On the contrary, the Complainants have submitted evidences about the registrations of trademarks FERROVIAL, AGROMAN and F&A FERROVIAL AGROMAN INTERNACIONAL in the geographical area where the Respondent lives in (i.e. Spain).
The Respondent has not carried out any serious purpose to undertake any commercial activity related with the disputed domain names. The absence of this purpose is an evidence that the Respondent does meet with the above mentioned requirement.
It should be stressed that the Complainants confirm that the Respondent has not been authorised, on the grounds of a license agreement to use the name FERROVIAL, AGROMAN or any other of its trademarks. The Respondent has no relationship with the legitimate owner of the rights related to the trademarks of the Complainants.
Therefore, the requirement of Paragraph 4.a.(ii) is met.
"4.a.(iii) Respondent’s Registration and Use of the Domain Names in Bad Faith"
The Complainants are the holders of many trademark rights and domain names that are similar to basic and fundamental words forming the domain names at issue (see Annex 3 to the Complaint).
The approach to the concept of bad faith has to be focused not only from a subjective, but also from an objective perspective. It is not only the knowledge of the Respondent when purchasing a domain name similar to a relevant trademark, it must also be decisive the sole fact of the continuous use of such a domain name under conditions revealing that the Respondent’s activity, both registration and actual use, cannot be allowed without at the same time causing a damage to a legitimate interest or to a potiur ius.
Due to the fact of the above-mentioned trademark registrations, the notorious and well-known name of the Complainants’ trademarks and corporate name, mainly along the Spanish market and also since the Respondent is Spaniard and its activity is focused to the real estate sector, it cannot be accepted that the Respondent was not aware of the trademarks FERROVIAL and AGROMAN or the corporate image of the Complainants, either in the moment of registering the domain names at issue, or afterwards when using them. It should be taken into account that GRUPO FERROVIAL, S.A. has registered FERROVIAL in all of the Classes of the international nomenclature. Besides, it has registered the trademark AGROMAN in the most important classes of the international nomenclature which are related with the main activity of the Complainants in the field of the constructions. Therefore, the activity of the Complainants spreads to different sectors of commerce.
It should be presumed that the Respondent is using in bad faith the domain names if the foregoing conditions, inter alia, are met, since otherwise it would be very difficult, almost impossible, for the Complainants to demonstrate the internal animus of the Respondent when registering the domain names, or when using them, and thus to demonstrate that an illegal activity has taken place. Another solution would mean for the Complainants a so-to-speak probatio diabolica that cannot be allowed. Consequently, once the Complainants have created the appearance of legality and legitimate interest, and they have proved to be owner of exclusive rights on specific distinctive signs, the burden of proof must be for the Respondent who must prove that he has purchased or is using in good faith the disputed domain names.
The Panelist must conclude that the Respondent was completely aware that the registration of the domain names <ferrovial-agroman.net> and <ferrovialagroman.com>, on which the Respondent has not proved to have any right or interest, caused a damage to and collides with the rights and legitimate interests of the Complainants.
In addition, it cannot be ignored that the Respondent’s main activity seems to be related with the real estate sector (Annex 7 to the Complaint). This sector is precisely one of the most important areas where the Complainants develop their activity. Therefore, it cannot be conceived that such an entity was not aware or did not know any of the trademarks of the Complainants or their corporate image or fame in the Spanish market.
But the requirement of the bad faith in the registration or in the actual use of the domain names can be deduced from other relevant facts.
In the Complainants’ opinion, the lack of use by the Respondent of the disputed domain name is an evidence of his bad faith. Annex 5 to the Complaint clearly shows that the Respondent does not use the Web Sites of the domain names.
According to previous decisions of the Center, which are quoted in the Complaint (see Decisions D2000-0018 Banco Español de Crédito, S.A. v. Miguel Duarte Perry Vidal Taveira, D2000-0020 Compagnie de Saint Gobain v. Com-Union Corp , D2000-0239 J. García Carrión, S.A. v. Mª José Catalán Frías and D2000-0277 Deutsche Bank AG v. Diego-Arturo Bruckner, inter alia), the use in bad faith of the Domain Name may be declared even if it has not been used at all, nor there are serious purposes thereto.
Accordingly, the Panelist does agree with the argument that the Registrant is also using the domain names in bad faith by just using them in a passive way, that is, by not including any contents whatsoever within the Web Sites corresponding to the domain names at issue, since this sort of use eventually prevents the Complainants from making a legitimate use of them. Nevertheless, in my opinion this conclusion is valid as long as the rest of requirements, previously analysed, are met. The mere lack of use should not per se be considered as decisive to confirm Respondent’s bad faith.
Therefore, the domain names <ferrovial-agroman.net> and <ferrovialagroman.com> were registered and are being used in bad faith.
The Complainants have proved that the domain names at issue are identical to its trademarks and domain names, that the Respondent has no rights or legitimate interest in the domain names at issue, and that the Respondent did register and is using the domain names in bad faith. Therefore, according to Paragraphs 4 (i) of the Policy and 15 of the Rules, the Panel requires the registration of the domain names <ferrovial-agroman.net> and <ferrovialagroman.com> to be transferred to GRUPO FERROVIAL, S.A. according to the remedies requested in the Complaint.
Jose Carlos Erdozain
Dated: March 4, 2001