WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sonora Electroacústica, S.A. v. Don Sheldon
Case No. D2001-0687
1. The Parties
The Complainant is Sonora Electroacústica, S.A. (SONELSA), a Spanish company with address at Calle Don Ramón de la Cruz, 64, 28001 Madrid, Spain, and principal place of business at Pol. Ind. Trascueto, s/n., 39600 Revilla de Camargo, Cantabria, Spain, represented in this administrative proceeding by Mr. Juan Vallejo, of Santander, Spain.
The Respondent is Mr. Don Sheldon, with an address – according with NSI´s registration records – at Alexandria, VA, USA. On June 25, 2001, after the administrative proceeding had commenced, Mr. Sheldon submitted to the Center that his address for notification purposes is 3640 North Ocean Drive, Singer Island, FL 33404, USA.
2. The Domain Name and Registrar
This dispute concerns the <fonestar.com> domain name, registered with Network Solutions, Inc. (NSI), of Herndon, Virginia, U.S.A.
3. Procedural History
On May 23, 2001, a complaint concerning the domain name registration was electronically submitted to the WIPO Center. On May 29, 2001, the complaint was submitted in hardcopy. On May 25, 2001, the Center acknowledged receipt of the complaint’s electronic version.
On May 29, 2001, NSI replied to the Center´s verification request by informing that the domain name at issue was registered with it, that Mr. Don Sheldon is the registrant, as well as the administrative and billing contact, that Network Solutions´5 Service Agreement is in effect, and that the domain name is in "active status".
On June 4, 2001, the Center sent a notification of complaint deficiency to the Complainant. On June 8 and 14, 2001, the Complainant satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules and Supplemental Rules by amending its complaint. On June 20, 2001, the Center sent its Notification of Complaint and Commencement of the Administrative Proceeding to the Respondent. The last day for sending the Response to the Complainant and to the Center was July 9, 2001. The Panel finds that the Center has discharged its responsibilities pursuant to Rules, Paragraph 2(a), in that it made all reasonable efforts to notify the complaint to the Respondent.
Between June 8 and June 25, 2001, there was an exchange of e-mails between Respondent and the Center.
On July 9, 2001, after having received Roberto A. Bianchi’s Statement of Acceptance and Declaration of Impartiality and Independence, the Center appointed him as sole panelist in this present Case No. D2001-0687. The deadline for the Panel to render a decision was July 22, 2001. The Panel independently finds that it has been properly constituted, that the complaint complied with all formal requirements, and that the fees have been paid.
On July 9, 2001, the electronic version of the case file was transmitted by the Center to the panelist.
There were no orders issued. There were no extensions.
The amended complaint has been submitted in English. The registration agreement is in English. The mutual jurisdiction, as selected by Complainant under Rules, Paragraph 3(b)(xiii), is the jurisdiction of the courts where the principal office of the concerned registrar is located, that is at Herndon, Virginia, U.S.A. Respondent has an address in Virginia or Florida, USA, an English-speaking country. This proceeding shall therefore continue in English (Rules, Paragraph 11).
4. Factual Background
The following uncontested facts are found by the Panel to be established as true:
Complainant is a Spanish manufacturing company, which produces electronic and audio equipment. One of its brands is FONESTAR. This mark is used in relation to amplifiers, CD-players, speakers, microphones and intercoms (source: catalogue 01-1 of SONELSA annexed to the complaint).
According with the Spanish Patent Trademark Office registration certificate Complainant registered the FONESTAR trademark under Registration Nr. 2039046 on August 20, 1997. The trademark application is dated July 10, 1996. This mixed trademark is for class 9, with a description of the covered products, including electro-acoustic electronics.
On May 10, 2001, Complainant sent an electronic message to Respondent to express Complainant’s intention of recovering the domain name, and to let it know that in case the parties do not come to an understanding Complainant would initiate this proceedings. On the same day Respondent replied to Complainant that Complainant did not have the right of using the domain by the Internet. On May 11, 2001, Complainant requested from Respondent that he issue a fax or postal address where Complainant could send him the relevant documents, which guarantee the possession of the brand name FONESTAR. No reply was received from Respondent.
Respondent registered the domain name <fonestar.com > on January 25, 1999.
As provided by incorporation in the NSI´s service agreement in effect (version 5.0), the applicable dispute resolution policy is the ICANN UDRP, which establishes this Panel’s jurisdiction in the instant case.
5. Parties’ Contentions
Complainant contends the following:
- The domain name [s] [is/are] identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
- The Respondent has no rights or legitimate interests in respect of the domain name.
- The domain name [s][was/were] registered and [is/are] being used in bad faith.
- In accordance with Rules para. 3.b)viii), the complainant has the rights of the name FONESTAR as well as the FONESTAR logo denomination. The register number is 2039046 Class 9, in the Spanish Register of Patents and Marks.
- The complainant is well known by the brand name FONESTAR which includes any kind of Outdoor Sound Systems (streets, squares, beaches, stadiums, ...), Indoor Sound Systems (classrooms, churches, factories, ...) as well as other Accessories for sound installations.
- At the complainant web site (http://www.sonelsa.es) information can be seen about the products marketed under the brand name FONESTAR, which is nowadays well known.
- See Annex 4 enclosure with the latest new products catalogue as a sample of the 360 pages general catalogue available under requirement by any parts of this complaint.
- In accordance with Rules para. 3.b)ix), the current titular (sic) of the domain does not own the register brand name FONESTAR and his fonestar.com denomination does not identify any society, product or service, so it does not have any legitime (sic) interest or right to uses (sic) the fonestar.com denomination.
- Before showing this claim dated May 10, 2001, we sent an electronic message to the respondent to express our intention of recovering the domain, controversy matter, and let him know that in case we do not come to an understanding we would show an arbitrage (sic) demand in the presence of the OMPI. The same day we received a negative reply from the respondent asserting that we did not have the right of using this domain by the internet. Last May 11, 2001, we answered to the respondent so that he issued us a fax or postal address where we can send the relevant documents which guarantee the possession of the brand name FONESTAR, and reiterating our intention of setting a demand within a period of a week. By now, we have not received any news from the respondent.
Respondent has failed to send a regular response. However before the commencement of this proceeding Respondent replied to the Complainant that Complainant "did not have the right of using this domain by the internet". Before and after the notification of complaint Respondent also sent several e-mails to the Center, stating the following:
June 8, 2001. Complainant never attempted to register a website until now. Respondent does not know who (Complainants) are. Respondent does not wish to relinquish the site, nor does it wish to sell it.
June 20, 2001. Respondent does not know, nor has Respondent heard from email@example.com. Respondent does not wish to lose this registration, nor does it wish to sell it.
June 21, 2001. Respondent stated that it has not received any papers or e-mail from the complainant, which makes difficult to respond by July 9, 2001.
June 25, 2001. Respondent copies to the Center an e-mail to Mr. Vallejo of SONELSA stating that Respondent does not wish to relinquish the domain name <fonestar.com>, and that Respondent will accept a panel’s decision. Such decision should be sent to 3640 North Ocean Drive, Singer Island, FL 33404 USA.
Such communications determined the Center not to find that Respondent be in default.
6. Discussion and Findings
Identity or Confusing Similarity
Complainant has established trademark rights in the Spanish FONESTAR mark in class 9, pre-dating the domain name registration. A simple comparison shows that the domain name is identical to Complainant’s mark.
The Panel finds that the requirement of Policy, Paragraph 4(a)(i) is met.
Lack of Rights and Legitimate Interests
Complainant has denied that Respondent has any rights or legitimate interests in the domain name. Respondent has not alleged or evidenced any circumstances for a finding in its favor under Policy, Paragraph 4(c).
On July 15, 2001, the Panel independently tried to establish an Internet connection with the web page under the corresponding <fonestar.com > domain name. The connection resulted in a web page with a text reading "Coming soon. We recently registered our domain name at … register.com", with several other texts and links offering register.com services related to the Internet. This means that the web site is not being used in any respect. It also means Respondent is not making any bona fide use, or any fair and non-commercial use of the domain name.
The second prong of the Policy, Paragraph 4(a) is thus present.
Bad faith Registration and Use
To be entitled to obtain a panel’s decision for transfer or cancellation, a complainant must prove all three requirements under Policy, Paragraph 4(a). When it comes to registration and use in bad faith, pursuant to Rules, Paragraph 5(b)(ix)(3) the complaint shall "describe, in accordance with the Policy, the grounds on which the complaint is made including, in particular, why the domain name should be considered as having been registered and being used in bad faith." "The description should, for element (…)(3), discuss any aspects of Paragraphs 4(b) and 4(c) of the Policy that are applicable."
The Rules do not impose any special format for a complainant to discharge the onus probandi. A complainant can for instance use a model complaint such as the one provided by the WIPO Arbitration and Mediation Center. Complainant appears to have used this model complaint. The model complaint is nothing more than a convenience format or structure that must be completed with meaningful and reasoned assertions, and supported by sufficient evidence. The following information is clearly displayed on the Center’s web page (http://www.wipo.int/amc/en/domains/complainant/index.html):
"Please note that the use of the above methods is optional. You may also prepare and submit the Complaint without using these facilities."
"Using the model Complaint as a basis for the preparation of a party's submission does not preclude the possibility of the Complaint being found deficient following the WIPO Center's formalities compliance review, nor of the Center or an Administrative Panel requesting the complainant for additional information. In addition, it does not guarantee a complainant's success on the merits."
In any case the Rules require that the complaint be based on a description of grounds and discussion of relevant aspects of the Policy. According with Rules, Paragraph 10 (d), "the Panel shall determine the admissibility, relevance, materiality and weight of the evidence".
As it can be seen under section 5 above, in the present case Complainant has barely contended that "the domain name was registered and is being used in bad faith", without further description of grounds or discussion of any applicable aspects of Policy, Paragraphs 4(b) and 4(c).
This Panel cannot overlook or condone such evidentiary omissions of the complaint, even in this case where Respondent has not shown much interest in defending its case, and where –as seen above- he lacks rights or legitimate interests in a domain name identical to Complainant’s mark.
Under its powers pursuant to Rules, Paragraph 10(d) the Panel finds that Complainant failed to prove the requirement of Policy, Paragraph 4(a)(iii).
The Panel finds that the domain name is identical to Complainant’s mark, and that Respondent lacks rights and legitimate interests in the domain name.
However, Complainant has failed to prove that the domain name was registered in bad faith or that it is being used in bad faith.
Accordingly and pursuant to Policy, Paragraph 4(i) and Rules, Paragraphs 10(d) and 15, the Administrative Panel denies the remedy requested in the complaint. The domain name registration of <fonestar.com> should not be transferred to the Complainant.
Roberto A. Bianchi
Dated: July 18, 2001