WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sources Minérales Henniez SA. v. Ortensio Vaccaro
Case No. D2001-0638
1. The Parties
The Complainant is Sources Minérales Henniez SA, a company incorporated under the laws of Switzerland, with principal place of business in Zone industrielle, 1525 Henniez, Switzerland.
The Respondent is Ortensio Vaccaro, Rue Basse 55, 1422 Grandson, Switzerland.
2. The Domain Names and the Registrar
The domain names at issue are <henniez.org> and <henniez.net> (the "Domain Names"). The registrar is Domain Bank, Inc, 23 West 4th Street, US-Bethlehem, PA 18015-1603, U.S.A. (the "Registrar").
3. Procedural History
On May 9, 2001, the Complainant filed by e-mail a complaint (the "Complaint") with the WIPO Arbitration and Mediation Center (the "Center"). The Center received a hard copy of the Complaint on May 10, 2001.
On May 11, 2001, the Center requested the Registrar to verify the Domain Names in dispute. On the same date, the Registrar confirmed that it is the registrar of the Domain Names, that it has received the Complaint, that according to its records the current registrant is Ortensio Vaccaro, Rue Basse 55, Grandson, 1422 Switzerland, that the administrative contact is the same as the registrant, that the Policy applies to the Domain Names and that the Domain Names are in "active" status.
On May 16, 2001, the Center proceeded to verify whether the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "ICANN Rules") and the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "WIPO Rules"). The Center concluded that the Complaint satisfies all of these formal requirements, except the payment of the requisite fees.
On May 23, 2001, the Center sent a deficiency notification to the Complainant requesting the transfer of the required fees in accordance with the Rules. On the same date, the Complainant filed the proof of payment indicating that the fees have been transferred on May 10, 2001.
On May 25, 2001, the Center notified the Respondent of the commencement of the administrative proceedings, sent a copy of the Complaint to the Respondent and set a deadline for filing a Response. On June 13, 2001, Respondent timely filed his Response.
On June 22, 2001, the Center informed the Parties that an administrative panel (the "Panel") has been appointed and transferred the file to the Panel.
The Panel finds it was properly constituted in compliance with the ICANN Rules and the WIPO Rules and the panelist issued a Statement of Acceptance and Declaration of Impartiality and Independence.
4. Factual Background
The Complainant, Sources Minérales Henniez SA, is a well known Swiss producer of mineral water and other soft drinks. It owns several trademarks including the name HENNIEZ which are registered in Switzerland and other countries, like e.g. France, Italy, U.S.A. etc. Its trademark registrations claim among others mineral water, beers and non-alcoholic drinks in International Class 32. A list of Complainant's trademarks is attached to the Complaint (Annex 6).
The Respondent is Ortensio Vaccaro, a Swiss citizen who registered the Domain Names on October 1, 2000.
The Domain Names do not resolve to an active website.
5. Parties' Contentions
- that Complainant's trademarks containing the name "HENNIEZ" are well known in Switzerland and other countries. The name "HENNIEZ" is being used since 1913 when the company has been incorporated (Annex 5) and its numerous trademarks have been registered since 1962 (Annex 6);
- that on April 5, 2001, Complainant's counsel contacted Respondent and requested the transfer of the Domain Names to the Complainant. Following an exchange of correspondence, the Respondent refused the transfer;
- that the Domain Names <henniez.org> and <henniez.net> are identical to Complainant's trademark;
- that the Respondent does not appear to be interested in the Domain Names because he neither used them, nor is he preparing to use them in the future;
- that the Respondent has no right or legitimate interests to the Domain Names at issue because he has never been known by the name "HENNIEZ", nor is he making a non-commercial or fair use of the Domain Names;
- that the Complainant has neither licensed nor permitted the Respondent to use its mark or apply for any domain name incorporating this mark;
- that the Domain Names have been registered and used in bad faith, notably because the Respondent must have known the trademark "HENNIEZ" and because the registration of the Domain Names prevents the Complainant from reflecting its mark in corresponding domain names;
- that the Respondent appears to engage in a pattern of conduct regarding the registration of famous Swiss trademarks. Complainant states that Respondent admitted to having registered another domain name which includes the Swiss brand of mineral water "Arkina" (Annex 9).
The Respondent admitted that he has never been licensed nor authorized by the Complainant to register the Domain Names incorporating the "HENNIEZ" marks. The Respondent further contends:
- that the Complainant has not diligently registered the Domain Names for its own products;
- that the Complainant cannot prove that the Respondent is a speculator because the Respondent has not "acted only in order to obtain money";
- that the Domain Names are not connected to any active sites and that, therefore, he does not make a bad faith use of them.
6. Discussion and Findings
To have the disputed Domain Names transferred to it, the Complainant must prove each of the following (Policy, paragraph 4(a)):
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the Respondent's domain name has been registered and is being used in bad faith.
(i) Identity or Confusing Similarity
The Complainant has shown that it owns several trademark registrations including the name "HENNIEZ" in Switzerland and other countries. The Panel therefore finds that the Domain Names at issue are identical to Complainant's trademark.
(ii) Legitimate Rights or Interests
In order to demonstrate Respondent's rights or legitimate interest in the Domain Names, the Policy requires the Respondent to submit evidence of his rights or legitimate interests to the Domain Names. The Respondent did not submit any such evidence. Rather, the Respondent admitted that he has never been licensed nor authorized by Complainant to register the Domain Names incorporating the "HENNIEZ" marks.
Therefore, the Panel finds that the Respondent did not demonstrate legitimate rights or interest in the disputed Domain Names.
(iii) Registration and Use in Bad Faith
The trademark HENNIEZ is very well-known in Switzerland, and the Respondent must have been aware thereof. The Domain Names clearly identify the Complainant's trademark. This trademark is so obviously connected with Complainant that, by definition its registration by Respondent, must have been made in bad faith. Although no actual use has been made so far, any use by the Respondent of these Domain Names would necessarily create a likelihood of confusion with the Complainant's mark in the sense of paragraph 4(b)(iv) of the Policy (Banca della Sella S.p.A. v. Mr. Paolo Parente, D2000-1157; Veuve Cliquot Ponsardin v. The Polygenix Group Ltd., D2000-0163; Ingersoll-Rand v. Frank Gully, D2000-0021).
Panels have repeatedly held that passive holding of a domain name may constitute a "use" in the sense of paragraph 4(a)(iii) of the Policy. Contrary to what the Respondent contends, the concept of a domain name being used in bad faith is not limited to positive action; rather, inaction is within the concept (Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003; WWF Entertainment, Inc. v. Ringside Collectibles, D2000-1306).
Accordingly, this Panel finds that the Respondent has registered and used the Domain Names in bad faith.
For all of the foregoing reasons, this Panel decides that the Domain Names <henniez.org> and <henniez.net> registered by the Respondent are identical to the trademark "HENNIEZ" owned by the Complainant, that the Respondent has no rights or legitimate interests in respect of these Domain Names, and that the Respondent registered and used the Domain Names in bad faith. Accordingly, pursuant to paragraph 4 (i) of the Policy, the Panel requires that the registration of the Domain Names <henniez.org> and <henniez.net> be transferred to the Complainant.
Dated: July 4, 2001