WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fadesa Inmobiliaria, S.A. v. Flemming Madsen
Case No. D2001-0570
1. The Parties
1.1 Complainant: Fadesa Inmobiliaria, S.A. with a place of business at Avda. Alfonso Molina s/n., 15008 La Coruña, Spain, represented by Mr. Alvaro Aguilar de Armas whose address for these purposes is Plaza Pablo Ruiz Picasso s/n., Torre Picasso, 5º. Piso, 28020 Madrid, Spain.
1.2 Respondent: Mr. Flemming Madsen whose address is Casa 119, Condes de Isa, Nueva Andalucía, Marbella (Málaga), Spain.
2. The Domain Name and Registrar
2.1 The subject of the complaint is the domain name < fadesa.net> .
2.2 The registrar is Network Solutions Inc. with a place of business at 303 Huntmar Park Drive, Hurndon, Virginia 20170-5139, USA.
3. Procedural History
3.1 A complaint was submitted to the WIPO Arbitration and Mediation Center (hereinafter "the Arbitration Center") on April 19, 2001, by e-mail and in hard copy on April 27, 2001, in accordance with the Uniform Domain Name Dispute Resolution Policy (hereinafter the "Uniform Policy") adopted by ICANN on October 24, 1999, and in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter "the Rules") that ICANN likewise adopted.
3.2 Following the corresponding verification of the Registrar, the respondent was notified of the complaint on April 30, 2001, and was given a term of twenty days, consequently expiring on May 19, 2001, within which to submit a reply to the complaint.
3.3 Prior to the expiration date, specifically on May 15, 2001, the respondent sent an e-mail to the Arbitration Center, requesting an eight-day extension of the term for replying to the complaint.
3.4 On May 21, 2001, the Arbitration Center notified the respondent of his failure to reply to the complaint. The respondent replied by e-mail that very day pointing out that he had requested an extension of the term for replying to the complaint and had received no reply. The Arbitration Center immediately sent another e-mail to the respondent, also on May 21 2001, granting a seven-day extension for reply, that was to expire on May 27, 2001. The respondent submitted his reply on May 25, 2001.
3.5 It must be pointed out that the complainant's representative expressly opposed the granting of an extension to the respondent and did so by e-mail sent to the Arbitration Center on May 21, 2001.
3.6 In a communication dated June 6, 2001, Mr. Luis H. de Larramendi was appointed sole panelist and was provided with a complete copy of the documentation.
4. Factual Background
4.1 The complainant is proprietor of several trademark registrations for its FADESA mark in Spain and in other countries, in addition to owning a Community trademark for the word. These trademark registrations distinguish the real estate and construction services characteristic of the complainant's business.
The complainant duly evidenced its ownership of its Spanish trademark registrations, its Community trademark registration and its international registration designating Morocco, as an example. It did not provide evidence of the Argentine trademark application that it claimed.
FADESA was also the complainant's anagram under its former name, Urbanizadora Inmobilidaria Fadese, S.A. (FADESA) and it now forms part of the complainant's name FADESA INMOBILIARIA, S.A.
As evidenced in the complaint, the complainant is well known in its business under the trade name FADESA, a point not refuted by the respondent.
The complainant holds a domain name registration for <fadesa.es>.
4.2 The respondent registered <fadesa.net> as a domain name on October 18, 2000, the status of the domain name being "active".
4.3 The <fadesa.net>, website contains a page criticizing the complainant. It literally indicated that "Grupo Fadesa – the Spanish real state development company – is cheating and misleading its customers and partners". The page has no content at the present time as a result of the interim relief granted by the Spanish Court with whom the complainant brought a criminal action against the respondent precisely because of the content of the web page. It follows from both parties' submittals that the Court proceedings are still under way.
5. Parties' Contentions
The complainant contends:
- that it is the owner of several trademark registrations for FADESA.
- that it is also the owner and user of the domain name <fadesa.es>.
- that the FADESA trademark is renown in the real estate and construction sector, precisely as a sign identifying the complainant.
- that the domain name in conflict is identical to the complainant's FADESA trademark.
- that the respondent has no legitimate interest and no rights whatsoever in the domain name under debate.
- that the respondent registered and uses the domain name in bad faith given that its sole purpose was to display denigrating content concerning the complainant.
- that precisely for this reason, the complainant brought a criminal action against the respondent in Spain.
As a result, the complainant petitions that the < fadesa.net> domain name registration be transferred to it.
The respondent replied to the complainant's contentions as follows:
- that he registered the <fadesa.net> domain name as a forum of free speech to set out his criticisms and opinions of the complainant.
- that since the parties do not coincide in the same sector of trade, there is no risk of confusion and, therefore, no trademark infringement.
- that a trademark does not guarantee its owner against criticism and that the right to criticize is recognized by the Constitution of the United States of America (seat of the Registrar) and by the Universal Declaration of Human Rights.
- that to express opinions constitutes a right and, therefore, the respondent may claim a legitimate interest in the domain name in conflict.
- that the domain name was registered for no purpose other than criticism; it was not registered in order to sell it or the like.
6. Discussion and Findings
6.1 Preliminary Questions
6.1.1 Despite the fact that the parties in conflict reside in Spain and that legal proceedings are under way in Spain and are being substantiated in Spanish, English is the language of the registration and the language in which the parties have conducted these proceedings without protest. Consequently, although the panel considered the possibility of rendering its decision in Spanish, it decided that the language of the proceedings should continue to be English.
6.1.2 The panel believes that the existence of legal proceedings brought by the complainant against the respondent should not preclude a decision by the panel for the following reasons:
- Neither of the parties has requested that the proceedings be suspended nor raised any objection to the Arbitration Center resolving the controversy.
- It does not follow from the parties' allegations that the legal proceedings before the Courts will decide the question of ownership of the domain name in conflict.
- Naturally, the decision taken by the panel will in no way be binding on the Spanish Courts nor will it pre-judge the question. Furthermore, it follows from the parties' allegations that the pending criminal proceedings refer to the content of the website whereas the subject proceedings will decide only whether or not the domain name in conflict must be transferred to the complainant in accordance with the regulations and principles of the Uniform Policy, the Rules and principles of law of Spain which the panel deems particularly applicable given that both the complainant and the respondent reside in Spain.
6.1.3 Although the complainant is of the opposite opinion, the panel decides to accept the respondent's reply given that his request for an extension of the term for reply was made within the initial twenty-day term. Furthermore, the panel believes that, with the exception of clearly unjustified cases, the adversarial principle must prevail in case of doubt and each party must be given the opportunity to set forth his allegations.
6.2 Examination of the Premises set out in Paragraph 4(a) of the Uniform Policy
These premises are:
- the domain name registered by the respondent must be identical or confusingly similar to a trade mark or service mark in which the complainant holds rights.
- the respondent must have no rights or legitimate interest in respect of the domain name; and
- the domain name must have been registered and used in bad faith.
6.2.1 Analysis of the Identity or Similarity of the Trademark and the Domain Name
There is no question that this first requirement has been met since the <fadesa.net> domain name is lexically identical to the FADESA trademarks of which the complainant has evidenced ownership. Obviously, the <.net> element is not to be taken into account for purposes of comparison.
6.2.2 Analysis of the Existence or Non-Existence of Rights or Legitimate Interests in the Domain Name in Conflict held by the Respondent
As stated in Decision D2000-0467, the respondent obviously has the right to freely express his opinions. However, this does not mean that his criticism may be effected through use of a website operating under a domain name that is identical or confusingly similar to the complainant's trademarks.
In Decision D2000-0071, the panelists held the following:
"Respondents claim to rights and legitimate interests is essentially based on a claim to freedom of speech and, expression of opinion, but that right does not require the use of Complainant's trade marks in the domain names for that purpose.
A domain name is not merely an address, it is also a means of identification. As noted in the final report of WIPO: [Final Report on the first WIPO interest DN Process]
' Domain names were intended to perform a technical function in a manner that was convenient to human users of the Internet. They were intended to provide addresses for computers that were easy to remember and to identify without the need to resort to the underlying IP numeric address. Precisely because they are easy to remember and to identify, however, domain names have come to acquire a supplementary existence as business or personal identifiers[…]'
The adoption by the Respondents of an Internet address substantially identical or confusingly similar to that of the name, Internet address and trade marks of the Complainant must inevitably and misleadingly divert consumers to that address and have the effect of tarnishing the trade marks..."
Along the same lines, Decision D2000-0299 holds that:
"...the right to express one’s views is not the same as the right to use another’s name to identify one’s self as the source of those views. One may be perfectly free to express his or her views about the quality or characteristics of the reporting of the New York Times or Time Magazine. That does not, however, translate into a right to identify one’s self as the New York Times or Time Magazine.
"...When an Internet user searches for Complainant’s mark, it will find Respondent’s website address. There is nothing in the domain name to indicate that the site is devoted to criticism of Complainant, even though this criticism is apparent upon visiting Respondent’s site. By using Complainant’s mark, Respondent diverts Internet traffic to its own site, thereby potentially depriving Complainant of visits by Internet users."
As occurred in the aforementioned Case D2000-0467, the panel agrees with this reasoning. Obviously, the respondent may publish his criticisms of and complaints about the complainant. To do so, however, he must adopt a domain name that is not identical to the complainant's trademark by which complainant is moreover well-known in the field.
In this respect, many decisions cited by the respondent mention the use made in practice of certain endings which, when used as part of a domain name, suggest that the website is for the purpose of criticism (for example, the "sucks" element). In this case, the respondent did not register <CRITICAFADESA.NET> or a similar name but rather <fadesa.net> directly. Furthermore, it must be pointed out that the decisions the respondent cites in his defense do not refer to cases such as the subject case and are in fact damaging to his interests.
The purpose of these proceedings is not to establish the limits of free speech or freedom to criticize the complainant. That task falls within other institutions such as the Spanish Court hearing the criminal proceedings between the parties on the basis of regulations different from those governing the subject proceedings. However, it is clear that the legitimate exercise of the right to freedom of speech in no way justifies adopting a domain name identical to a renowned mark of a third party with the consequent risk that Internet users will be led into the error of believing that the domain name in question designates the website of the trademark owner.
Furthermore, the respondent's explanations do not conform to any of the premises established by paragraph 4(c) of the Uniform Policy given that:
i. The domain name has not been used in relation to a bona fide offering of goods or services;
ii. The respondent has not been known by the name FADESA;
iii. The respondent does not make legitimate non-commercial or fair use of the domain name with no intention of misleadingly diverting consumers or tarnishing the trademark or service mark in question for commercial gain. Although there appears to be no intent for commercial gain on the part of the respondent, by adopting the <fadesa.net> domain name, it is obvious that he deliberately attempted to divert consumers searching for the complainant on the Internet to his own website which was specifically intended to discredit the complainant with foreseeable commercial damage.
In short, the panel considers that the respondent does not hold legitimate rights or interests in the name FADESA and it is obvious that he cannot claim rights or interests "derived" from the complainant's original right in the name on the basis that it is a name to identify a site that refers to the complainant in a critical manner.
6.2.3 Analysis of the Existence or Non-Existence of Bad Faith in the Registration and Use of the Domain Name in Dispute
The panel finds that respondent's conduct clearly comes under the conditions set out under the title of "Evidence of Registration and Use in Bad Faith", paragraph 4(b)(iii) of the Uniform Policy, according to which registration and use of a domain name in bad faith is proven by having registered the name for the main purpose of disrupting the other party's business.
In fact, the circumstances that the parties argue and acknowledge show beyond doubt that the respondent registered the <fadesa.net> domain name for the sole purpose of displaying content that was disparaging and critical of the complainant, FADESA, simultaneously preventing the complainant from registering the domain name which would naturally correspond to it since it is well known as FADESA. As stated in aforementioned Decision D2000-0467, this conclusion is confirmed by the fact that the respondent has no legitimate rights and interests of his own in the domain name.
Therefore, as it is also stated in the aforementioned decision, the requirement set forth in paragraph 4(b)(iv) of the Uniform Policy is likewise met insofar as the adoption of a domain name identical to the complainant's trademark and to a name by which the complainant is moreover known implies a deliberate intention to divert Internet users who are searching precisely for the complainant to the respondent's website which is being actively used to the detriment of the complainant. In this respect, even though there is no "direct" intent for commercial gain, it is obvious that the use of the domain name in dispute deliberately seeks to commercially damage the complainant, a negative circumstance that, in the opinion of the panel, is perfectly equivalent to the intent for commercial gain mentioned in paragraph 4(b)(iv) of the Uniform Policy.
Furthermore, when determining bad faith in the use the domain name, reference may be made to the Spanish Law on Advertising of November 11, 1988, article 6 of which defines "unfair advertising" as: "A) that which, because of its content, presentation or exposure, provokes direct or indirect discredit, disparagement or contempt of a person, company or of its products, services or activities; B) that which leads to confusion with companies, activities, products, names, trademarks or other distinctive signs of competitors as well as that which makes unjustified use of the name, initials, trademarks or distinctive signs of other companies or institutions and, in general, that which is contrary to the rules of proper conduct and good commercial practices."
If the Arbitration Center’s decisions have held that lack of activity in respect of domain names in dispute may constitute a form of registration and use in bad faith effected through omission (Decision Nos. D2000-0464, D2000-0003, D2000-0239 or D2000-1402), use specifically made for the purpose of damaging or tarnishing the reputation of the company who owns the trademark and who is commonly known to the sectors of interest by the name in dispute and thus natural owner of the domain name must certainly be considered to be illegitimate use and use in bad faith.
In short, registration and use of the domain name in dispute is not justified by the respondent's claim that his sole intention was to exercise his right to freedom of speech and criticism of the complainant given that, in any event, the critical content of the website, the evaluation of which does not correspond to this panel, could have been placed on a website identified by any other domain name that was not identical or confusingly similar to the complainant's trademarks, the renown of which has moreover been sufficiently evidenced by the complainant.
For all the foregoing reasons, the Panel decides that the <fadesa.net> domain name is identical to the FADESA trademarks owned by the complainant; that the registration was effected in the absence of any legitimate right or interest; and that registration and use of the domain name has been effected in bad faith, although, naturally, this decision is in no way binding nor does it in any way pre-judge any legal actions that the parties have taken or may take before the Courts.
Consequently, the Panel requires that the < fadesa.net> domain name be transferred to the complainant.
Luis H. de Larramendi
Dated: July 9, 2001