WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Bodegas Vega Sicilia, S.A. v. Serafín Rodríguez Rodríguez

Case No. D2001-1183

 

1. The Parties

The Complainant is Bodegas Vega Sicilia, S.A. a company incorporated in Spain and seated in Finca Vega Sicilia, Carretera Nacional 122, Km. 323, Valbuena de Duero, Spain. Its representatives are Mr. Antonio Creus, Esq. And Mr. Albert Agustinoy, Esq., of Cuatrecasas Abogados, Madrid, Spain.

The Respondent is Serafin Rodriguez Rodriguez, with registered address in Apartado de Correos 18, Porto do Son, A Coruña (Spain).

 

2. Domain Name and Registrar

The domain name at issue is <vegasicilia.com>, registered with Go Daddy Software, Inc. with address at 4320 E Dynamite Blud, Cave Creek, AK-85331, United States of America.

 

3. Procedural History

On September 27, 2001, the Center received by e-mail a Complaint in accordance with the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, (the "Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The hardcopy of the complaint was received on September 28, 2001. On October 9, 2001, the Center received a supplemental filing.

At the Centerís request, on October 9, 2001, the Registrar Go Daddy Software, Inc. confirmed to the Center that the domain name at issue is registered with it, that the Respondent is the registrant, that is Rodriguez Rodriguez, Serafin, VegaSicilia Ltd., P.O. Box 119, Road Town, Tortola, Virgin Islands (British) and that the domain name is active.

On October 10, 2001, the Center sent to the Respondent a Notification of Complaint and Commencement of Administrative Proceeding.

On October 23, 2001, the Respondent submitted, and the Center received a communication from respondent and an answer of complainant regarding the language of the proceedings.

On October 23, 2001, the Center received a supplemental filing from the complainant.

On October 31, 2001, the Center comunicated to both parties the notification of respondent default.

After having received Alberto Bercovitz Statement of Acceptance and Declaration of Impartiality and Independence, the Center appointed him as a Sole Panelist, and transmitted the case file on November 27, 2001.

 

4. Factual Background

The following facts are established:

Bodegas Vega Sicilia, S.A. is one of Spains most reputed wine producers, with a long tradition in the production of extremely prestigious wines that covers almost one and a half centuries. The Vega Sicilia property was established in 1864 by Mr. Eloy Lecanda. At present, the Vega Siciliaís 250 acre vineyard is exploited by the Complainant. The property is placed at the western part of the Ribera del Duero region, in North-Central Spain, in Castilla-León. This is considered as one of the fastest growing wine regions in Spain.

The winemaking procedure used by Bodegas Vega Sicilia, S.A. remains completely traditional and the steps taken to insure quality are very strict.

The winery produces mainly two wines: Unico and Valbuena. Unico is the Complainantís most appreciated wine, being generally released only ten years after harvest, spending much of that time maturing in oak casks. The production of Unico is currently limited to 8,000 cases. At present, the 1986 vintage is the last one issued for sale, priced for about $ 150 per bottle. Valbuena is a red wine younger than Unico, that is also extremely appreciated by the specialists. Its production is also limited, being issued about 12,000 cases per vintage.

Vega Siciliaís wines have also been acclaimed by the wine specialists as one of the best red wines in the world. "Time" included Vega Sicilia Unico in the list of the 12 best wines of the world. The "Guia del Gourmet" called Vega Sicilia Unico as a "unique pearl". In the Wines Pocket Guide by Hugh Johnson Vega Sicilia Unico was awarded with the maximal qualification (4 stars)

The Vega Sicilia wines have become well-known world-wide. In that sense, the Complainant has been able to find web pages related to the Vega Sicilia wines from the following countries (listed in alphabetical order): Andorra, Australia, Austria, Belgium, Brazil, Canada, Denmark, Estonia, France, Hong Kong, Hungary, Israel, Finlad, Germany, Japan, Luxembourg, Mexico, Netherlands, New Zealand, Norway, Panama, Philippines, Poland, Russia, Sweden, Switzerland, Taiwan, United Kingdom and United States.

80% of the Complainantís production is marketed in Spain, being the resting 20% exported. Nevertheless, wine-testing sessions of Vega Siciliaís products are held in many countries, such as United States, United Kingdom, Hong Kong, Japan or Puerto Rico.

Bodegas Vega Sicilia, S.A. has not made advertising campaigns.

Vega Sicilia, S.A. is the owner of 46 registrations of the VEGA SICILIA trademark with the "Oficina Española de Patentes y Marcas (OEPM)". The first of these trademarks, VEGA SICILIA UNICO, was registered on November 21, 1923.

Vega Sicilia, S.A. is the owner of VEGA SICILIA marks in Thailand, Denmark, Gibraltar, Andorra, Bulgaria, Nicaragua, Perú, Domican Republic, Panama, Guatemala, Greece, Finland, Ireland, Norway, New Zealand, Paraguay, Sweden, Uruguay, Switzerland, Canada, Mexico, Chile, Australia, China, Taiwan, United Kingdom, United States, Japan and Germany. Bodegas Vega Sicilia, S.A. has applied for registration of its VEGA SICILIA trademark in India, France, Argentina, Colombia and Brazil. The complainant has algo registered before the World Intellectual Property Organisation the international trademarks "VEGA SICILIA" registered on December 22., 1982, covering Algeria, Germany, Austria, Benelux, Egypt, France, Hungary, Italy, Liechtenstein, Morocco, Portugal, Rumania, Saint-Marino, Switzerland, Cheque Republic, Tunisia, Soviert Union and Yugoslavia with registration number 473474. "BODEGAS Y VIÑEDOS VEGA SICILIA" was registered on August 2, 1991, as a Class 33 trademark, covering Algeria, Germany, Austria, Benelux, Bulgaria, China, Cuba, France, Hungary, Italy, Liechtensten, Morocco, Monaco, Portugal, Rumania, Saint-Marno, Switzerland, Czech Republic, Societ Union and Yugoslavia, with registration number 574348. "VEGA SICILIA" registered on January 29, 1992, as a Class 33 trademark, covering China, Cuba and Ruse Federation with registration number 583120.

The Respondent registered <vegasicilia.com> with Go Daddy Software, Inc. This domain name is not used, as has been observed by the sole panelist.

The Respondent has already been part of a UDRP proceeding due to the registration by him of the domain name <caixagirona.com>, corresponding to the trademark owned by the Spanish savings bank Caixa de Girona. As a consequence of the decision issued in WIPO Case no. D2000-1556, such a domain name was transferred from Mr. Rodríguez to Caixa de Girona.

In addition the Respondent also offers domain name registration and management services through a web page linked to the domain name <registrando.com> (www.registrando.com). According to the information posted in the above mentioned web page, Mr. Rodríguez has developed that activity since September 1995.

Before the domain name was blocked by the corresponding registrar (Go Daddy Software) the Respondent changed the information included in the WHOIS Data Base. Before that change the Registrant was Serafín Rodríguez Rodríguez, and his registered address was "Apartado de Correos 18, Porto do Son, A Coruña (Spain)". After the above mentioned change the Registrant was still Mr. Serafín Rodríguez Rodríguez, but the original address (Apartado de Correos 18, Porto don Son, 15970-A Coruña) was substituted by a new one which was®VegaSicilia Ltd., P.O. Box, Road Town, Tortola, Virgin Islands (British)" (BVI, hereinafther).

Nevertheless, after having contacted the BVI Registry of Companies, Trademarks and Patents, it has informed that no company named "VegaSicilia, Ltd.." has been neither incorporated nor registered in the BVI.

Afterwards the Registrant changed again his registered address into the same that was originally included, that is to say: Apartado de Correos 18, Porto do Son, Spain. This address is the currently registered as observed by the sole panelist.

 

5. Partiesí Contentions

A) Complainant

Complainant states:

According to the criteria that has been established in previous administrative decisions, it can be concluded that <vegasicilia.com> is totally identical to the trademark "VEGA SICILIA", meeting, consequently, the required element of interchangeability.

None of the criterias of Article 4(c) of the Policy is met in the present case, since:

(i) The Respondent has not made any use of the disputed domain name.

(ii) The Respondent is not commonly known by the name "VEGA SICILIA", which is exclusively referred to the Complainant.

(iii) The Complainant has not signed any contract or entered in any kind of agreement with the Respondent in order to use the trademark "VEGA SICILIA".

(iv) The Respondent is not making a non commercial or fair use of the disputed domain name as, since it has been registered, it has been linked to an inactive web site, in order to block that domain name, impeding its fair use by the Complainant.

Consequently, it must be concluded that the registration by the Respondent of <vegasicilia.com> was not guided by a legitimate purpose, as it could be the use of the domain name for the development of a commercial activities linked to a trademark owned by the Registrant. On the contrary, it seems that the only goal of such a registration was to impede the use of the disputed domain name by Bodegas Vega Sicilia, S.A.

There are no doubts that the Respondent registered the disputed domain names for the purpose to impede Bodegas Vega Sicilia, S.A. use of the disputed domain names, since it looks like the Respondent has no legitimate right on the trademarks corresponding to the name "VEGA SICILIA" and it is not using at all the disputed domain name.

Consequently, in the present case it is clear that at the time of registering the disputed domain name, the Respondent was basing its behaviour on criteria completely opposed to good faith, as such a registration corresponded to an evident "cybersquatting" strategy.

Such a conclusion is reinforced by previous UDRP decisions, where it was clearly stated that the massive registration of domain names corresponding to third parties trademarks on which the Respondent has no rights is a clear evidence of bad faith in the sense of the Policy.

Moreover, as previosly stated, "VEGA SICILIA" is a well known trademark in Spain and world-wide. Therefore, being the Respondent a Spanish citizen, it is quite unlikely that he was not aware of registering a domain name corresponding to a trademark on which he had no rights at all.

In the present case, from the moment the Respondent registered the disputed domain name, it has not included any content on the corresponding web page. Indeed, the web pages linked to the disputed domain name offers no content at all, but a generic message stating that this domain is parked.

The Respondent has adopted a passive attitude regarding the web pages linked to the disputed domain names. Thus, the question must be posed, whether such passivity may be considered as a cause of bad faith.

Concerning such type of behaviour, the decisions adopted in accordance with the Policy have considered that for that evaluation, all the circumstances related to the Respondentís behaviour must be taken into account.

In that sense, it has been established that it may be considered that the Respondent has behaved in bad faith if the above-mentioned circumstances show that the passive tenancy of a domain name has implied a use in bad faith.

In accordance with this approach, WIPO Case no. D2000-0018 considered that Article 1282 of the Spanish Civil Code is fully applicable to those cases, considering that, in order to judge the Respondentís will, it has to be taken into account primarily his contemporary and posterior actions vis a vis the registration of the disputed domain name.

According to this, it is obvious that in the present case, the Respondent acted in bad faith. Indeed, from its behaviour at the time of registering the disputed domain name and its subsequent lack of use, an unequivocal intention can be deduced: the "capture" of a strategic domain name for the legitimate owner of the corresponding trademark.

Besides, previous decisions have expressly considered that such a behaviour must be considered as constituting an act of bad faith.

Evidently, these arguments apply to the present case, since <vegasicilia.com> corresponds perfectly to VEGA SICILIAís trademarks registered by the Complainant.

Indeed, Vega Sicilia, S.A. has held the "VEGA SICILIA" trademark for many years, as well as other domain names related to such a trademark. Thus, by registering <vega-sicilia.com>, the Respondent was aiming at impeding the use on the Internet of the most important trademark for an international company, such as Bodegas Vega Sicilia, S.A.

On the other hand, it is important to take into account the fact that the Respondent has been previously condemned by a UDRP Panel, WIPO Case no. D2000-1556. Previous decisions have considered that such a fact, combined with other circumstances, can be considered as evidence of bad faith.

Accordingly, it is obvious that in the present case, the Respondent acted in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. Indeed, from its behaviour at the time of registering the disputed domain name and its subsequent lack of use, the Respondent acted in bad faith.

Thus, it must be concluded that the respondent acted in bad faith by registering <vegasicilia.com>.

B) Respondent

Respondent has stated that he does not speak English, having just a basic knowledge of such language. Consequently he requested the translation into Spanish of the Complaint, which was filed in English. As he is not able to understand the text of the Complaint and can not respond adequately to it, he alleges that he can not defend himself.

The Respondent failed to comply with the deadline indicated in the Notification of Complaint and Commencement of Administrative Proceeding. This means that the Respondent only submitted the above mentioned allegation on the language of the proceeding.

 

6. Discussion and Findings

6.1 Applicable rules

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute:

"A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it seems applicable."

In accordance with Paragraph 14(a) of the Rules,

(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.

And Paragraph 4(a) of the Policy states that, for a complaint to be granted, the Complainant must prove each of the following:

(i) that the domain name registered by the Respondent 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 domain name has been registered and used in bad faith.

6.2 Language and absence of a response to the Complaint by the Respondent

First of all the Panel must take into consideration the allegation made by the Respondent about the language of the proceeding and the fact of the absence of a response by the Respondent.

The allegation made by the Respondent about the language of the proceeding can not be accepted. According to Paragraph 11(a) the Rules,

(a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

In the present case there is no agreement between the parties, and the language used by Go Daddy Software, the Registrar of the disputed domain name, in its Registration Agreement is English. Therefore the language of this proceeding must be English.

Furthermore the Respondent, in proceeding WIPO case no. D2000-1556 (related to the domain name <caixagirona.com>), behaved in a completely opposed way than in the present proceeding. Indeed, in the above mentioned proceeding, the Complaint had been filed in Spanish, taking into account precisely the fact that both parties were Spanish. Nevertheless, in that case, Mr. Rodríguez requested WIPO to order the translation of such a document in English, according to the Policy and its Rules. Therefore, it seems clear that in both proceedings the request filed by the Respondent did and does not respond to Mr. Rodríguez language limitations, but to delay them and charge the Complainants with unreasonable costs.

On the other side, in the absence of a response to the Complainants claims by the Respondent, the Panel must consider those claims in the light of the evidence submitted by the Complainant. However the Panel cannot decide in the Complainantís favor solely given the Respondentís default but is entitled to draw, and does, such inferences as it feels just from the circumstances of the Respondentís failure to respond (WIPO Case no. D2000-0277, Deutsch Bank AG v. Diego-Arturo Bruckner).

Therefore the Panel has to discuss each of the above mentioned requirements of Paragraph 4(a) of the Policy.

6.3 Identity or Confusing Similarity between the Domain Name and a trademark.

The Complainant is the owner at least of 42 trademarks on the name "Vega Sicilia" registered in Spain and is also the owner of many other trademarks on the same name and at least in 36 different countries.

It is evident that the domain name <vegasicilia.com> is identical to the trademarks "Vega Sicilia". The only differences are the inclusion of the top-level domain "com" in the domain name and the absence of spacing between words. However it has been always considered that the absence of spacing between words is irrelevant when determining identity (ad. Ex., WIPO cases D2000-0098, D2000-0239, D2001-0397 and D2001-0773).

6.4 Rights or legitimate interests of the Respondent in respect of the domain name.

The Respondent has not been licensed, contracted or otherwise permitted by the Complainant, in any way, to use the "Vega Sicilia" mark or to apply for any domain name incorporating the "Vega Sicilia" mark nor has the Complainant acquiesced in any way to such application of the "Vega Sicilia" mark by the Respondent.

Indeed, at no time, did the Respondent have authorisation to register the domain name <vegasicilia.com>.

The Respondent has not filed any response to the Complaint and, so, has not alleged any facts or elements to justify prior rights of legitimate interest in the said domain name <vegasicilia.com>.

Consequently, according to the file, it seems that the Respondent has no rights or legitimate interests in respect of the domain name <vegasicilia.com>, within the meaning of paragraph 4(a)(ii) and (c)(i-iii) of the Policy.

6.5 Possible bad faith in the registration and use of the domain name

The Respondent lives in the same country, Spain, where the trademark Vega Sicilia is well-known and highly reputed as designation of one of the best Spanish red wines.

Previous decisions in WIPO Cases D2000-1026 and D2000-1028 have already declared that Vegasicilia is a well-known trademark.

This means that the Respondent knew that he was registering as a domain name, without any authorisation, a famous trade mark belonging to another entity. This registration is undoubtly a bad faith registration.

Concerning the use in bad faith, it is clear that when someone has registered a domain name in bad faith and having no legitimate interest in it, it is very unlikely that this domain name may be used in good faith. On the contrary, there is no doubt that someone who has registered a domain name in bad faith and having no legitimate interest in it, will use it in bad faith, given that, the assumption of a different solution would be absolutely contradictory. The person that behaves in bad faith by registering a domain name, will use it in bad faith, as bad faith is linked to the knowledge at the moment of the registration by the Registrant of the harm to a third partyís rights, without having a legitimate cause for behaving this way (WIPO Case no. D2000-0239).

On the other hand the fact that the domain name has not been used does not exclude a use in bad faith,

First of all, it is significant that in the UDRP, in its paragraph 4.c (which list is non-exhaustive) did not include as a possible defence by the Respondent the evidence of not using the domain name. And it is logical that such a defence is not foreseen as an acceptable one. It must be stated that it makes no sense and it is illogical to register a domain name for not using it at all. If such a defence would be admitted, this would constitute an alternative that would be frequently used by the Registrant of a domain name identical to somebody elseís trademark, behaving in bad faith aiming at selling it later to the legitimate owner of the trademark. It would be enough to register the domain name, not use it at all and simply wait until the owner of the trademark would make an offer for the purchase of the domain name. Thus, it must be considered that the lack of use of the domain name for the offering of any kind of goods or services offer in the linked web page constitutes a way of use aiming at impeding the registration of the domain name by the owner of the affected trademark. Decision in WIPO Case no. D2000-0022 established such a conclusion (see also WIPO Case no.D2000-0239).

Thus it has to be declared that the domain name <vegasicilia.com> has been registered and used in bad faith.

Moreover in the present case there are many circumstances which confirm that the Respondentís behaviour was in bad faith.

He registers as domain name a trade mark highly reputed and well-known in the same country where he lives. In a previous case against the same Respondent (WIPO Case no. D2000-1556, Caixa de Girona v. Serafín Rodríguez Rodríguez), the Panel ordered the transfer of another domain name to the Complainant, because the domain name was also registered and used in faith.

It is also relevant that the Respondent offers domain name registration and management services on a web page linked to the domain name <registrando.com>. Web page through which the Respondent has the possibility of negotiating with the domain names he registers.

The respondent changed during this proceeding the data of the registration of the domain name including as Registrant a supposed company in the Virgin Islands (British) which is not registered in the BVI Registry of Companies, Trademarks and Patents and afterwards he changed the data of the registration once more, coming back to the first address in Spain.

And finally he asks for a translation of the Complaint of the present proceeding in Spanish, because he alleges he does not understand English. But in a previous proceeding, WIPO Case no.D2000-1556, in which he was also Respondent, he asked for a translation into English of the Complaint, which was in Spanish.

All these circunstances show that the whole behaviour of the Respondent is clearly in bad faith.

 

7. Decision

In light of its finding, the Panel decides that the Complainant has proved, in accordance with paragraph 4(a) of the Policy that each of the three elements contemplated in such paragraph are present and, consequently, the Panel requires that the registration of the domain name <vegasicilia.com> be transfered to the Complainant.

 


 

Alberto Bercovitz
Sole Panelist

Dated: December 10, 2001