WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LACER,S.A. v Constanti Gómez Marzo
Case No. D2001-0177
1. The Parties
1.1. The Complainant is LACER, S.A. domiciled in Barcelona, Spain
1.2. The Respondent is Constanti Gómez Marzo, resident in Barcelona, Spain.
2 The Domain Name and Registrar
2.1 The domain name subject-matter of this Complaint is <aneurol.com>.
2.2 The Registrar of this domain name is Internet Domain Registrars of San Francisco, California, 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 February 1, 2001, and the hardcopy of the Complaint submitted by courier was received by the WIPO Center on February 2, 2001. An Acknowledgement of Receipt dated February 5, 2001, 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 February 6, 2001. The Registrar responded by e-mail to the WIPO Center on February 6, 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
February 7, 2001, by courier and e-mail. No Response was filed by the Respondent. The WIPO Center proceeded to notify the respondent’s default on February 27, 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 March 13, 2001. Therefrom, a decision shall be provided by this Administrative Panel, absent exceptional circumstances, by March 29, 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 is a Spanish pharmaceutical industry also operating in the health care and personal hygiene sectors. It owns, among others, the Spanish registered trademark no. 52820 "ANEUROL", granted on April 24, 1925 to distinguish products in classes 1 and 5 of the international nomenclator.
"ANEUROL" is a well-known trademark in the pharmaceutical sector of sedatives and tranquillizers.
4.2 The Respondent owns the domain name <aneurol.com>, registered through Internet Domain Registrars in May 27, 2000. The domain name is not in use, that is to say, there is no web site under this domain name.
5 Parties’ Contentions
5.1. The Complaint
5.1.1. The Complainant considers the domain name is totally identical to the denomination protected by the Complainant’s registered trademark "ANEUROL".
5.1.2 The Complainant contends that the Respondent has never used the domain name, the best proof of which is that the web page <aneurol.com> has never been available. The Respondent has adopted a passive attitude concerning his web page, therefore he has not established any right whatsoever on the denomination he registered <aneurol.com>.
5.1.3 The Complainant contends that the Respondent does not have any right on or relationship with the trademark ANEUROL, nor any right in relation to another trademark or commercial name including such denomination, neither has ever contracted with LACER, S.A.
5.1.4 The Complainant states that the Respondent registered the domain name <aneurol.com> with the only purpose of selling it to LACER, S.A., for a price exceeding the mere out of pocket costs, which indicates that the domain name was registered in bad faith. Likewise, the Complainant considers that the lack of use must be considered as use in bad faith.
5.1.5 The Complainant requests that the domain name be transferred to the Complainant.
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) LACER, S.A. is the rights holder of the Spanish trademark "ANEUROL" since 1925. It is in force and up to date as for renovation payments. The distinctive part of the domain name <aneurol.com> is absolutely identical to the registered trademark of the Complainant.
b) The trademark of the Complainant is known in the pharmaceutical sector and, specifically, in that of tranquilizers and sedatives.
6.2.2 Respondent’s rights or legitimate interests in the Domain Name
a) This panel has visited the site <www.aneurol.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.
This circumstance can only be interpreted as an absolute lack of interest, since renouncing to use the domain name the Respondent has renounced to an important proof of the existence of interest in such denomination. (See: Lusomundo-Sociedades Gestora de Paticipaçoes Sociais, S.A. and Lusomundo Audiovisuais, S.A. v. Inmosoria and Andrés Ceballos Moscoso, case no. D-2000-0523).
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.
The Respondent has in his hands the opportunity to provide with evidences to be opposed to the complaints and contentions of the Complainant; if he does not use them it must be inferred that such evidences would not have been favorable to him, or that he finds the statements of the Complainant right, or else that his interest in the domain name is so scarce that it is not worth his while to respond. In any case, silence is a choice of the Respondent, so if he does not bring doubts forward or contradicts the statements of the Complainant, the latter shall prove the three elements required by the Policy without further opposition than his own ability to explain them. (See: Franpin, S.A. v. Paint Tools, S.L,. case no. D-2000-0052; InfoSpace.com, Inc. v. Hari Prakash, case no. D-2000-0076; Easyjet Airline Company Ltd. V. Andrew Steggles, case no. D-2000-0024; Bartecard Ltd & Bartercard International Pty Ltd. V. Ashton-Hall Computer Services, case no. D-2000-0177 or Pomellato S.p.A. v. Richard Tonetti, case no. D-2000-0493).
c) The Panel considers that the Respondent has never had a relationship with the denomination ANEUROL, 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 principle of first come first served, is still in force on the net. But the first to come must come in good faith, and this has been often forgotten in this new environment that is Internet. What is illegal out of the net is illegal too on the net. (See: Repsol Comercial de Productos Petrolíferos, S.A. v. Juana Hidalgo Martos, case no. D-2000-1238)
b) 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 (See: Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co. case no. D2000-0163).
In a case like the present, in which the Respondent faces a claim made by the rights holder of a well-known trademark, the perfect proof of the interest and good faith of the Respondent is more necessary than in any other. This is so because due to the physical, personal or professional familiarity with the trademark it can be inferred, unless the contrary is proven, that the Respondent knew the trademark.
c) The lack of use of the domain name must also be reexamined under the perspective of good or bad faith. The lack of use by itself does not indicate anything. Nevertheless, the lack of use of a domain name that is not backed up by any trademark and that coincides with a known, well-known or renowned trademark owned by someone else, does not indicate other than bad faith in the sense of paragraph 4(b) of the Policy. (See: Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren, case no. D2000-0021; Compaq Computer Corporation v. Boris Beric, case no. D2000-0042; InfoSpace.com, Inc. v. Tenenbaum Ofer, case no. D2000-0075; Telstra Corporation Limited v. Nuclear Marshmallows, case no. D2000-0003"; Association of British Travel Agents Ltd .v. Sterling Hotel Group Ltd, case No. D2000-0086; Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc., case no. D2000-0090; Sanrio Company, Ltd. and Sanrio, Inc. v. Neric Lau, case No. D2000-0172 or J. García Carrión, S.A. v. Mª José Catalán Frías, case no. D2000-0239).
Moreover, existing so many evidences in one sense, the burden of proving the contrary should be turned around and the Respondent should be the one to have to justify his passive attitude. This has not been done in the present case, because the Complaint was not responded to.
d) Three days after registering the domain name , the Respondent addresses the Complainant with a sale offer for USD 6.000.-. The fax, which is enclosed as exhibit 9, has not been contradicted.
Therefore, the Panel concludes that the domain name has been registered with the purpose of selling it for a price very superior to the out of pocket expenses. A behavior governed by bad faith must be inferred from this circumstance. (See: World Wrestling Federation Entertainment, Inc. v. Michael Bosman, D-1999-0001 or Hipercor,S.A. v. Miguél Angel González, D-2000-0045)
e) 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.
The Panel concludes that the three elements contained in paragraph 4 (a) of the Policy are present in this case.
In view of the above circumstances and facts, the Panel decides that the domain name <aneurol.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 <aneurol.com> be transferred to Complainant.
Mario A. Sol Muntañola
Dated: March 29, 2001