WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Miguel Torres, S.A V. The Torres Group

Case No. D2001-1200

 

1. The Parties

The Complainant in this administrative proceeding is the Spanish company Miguel Torres, SA whose address is c/- Comercio, 22, 08720 Vilafranca del Penedes, Barcelona, Spain.

The Respondent is The Torres Group owned by Allan Torres, 271 Loma Entrada, Santa Fe, New Mexico 87501, United States of America.

 

2. The Domain Name and Registrar

This dispute concerns the domain name <torres.com> hereinafter the "Domain Name".

The Registrar with which the Domain Name is registered is Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, Virginia, United States of America.

The Domain Name was registered on or about June 29, 1995.

 

3. Procedural History

A Complaint pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), both of which were implemented by ICANN on October 24, 1999, was received by the Center in electronic format on October 3, 2001, and in hardcopy on October 5, 2001. Payment in the required amount to the Center has been made by the Complainant.

On October 8, 2001, a Request for Registrar Verification was sent to the Registrar requesting confirmation that it had received a copy of the Complaint from the Complainant, that the Domain Name was currently registered with it and that the Policy was in effect, and requesting full details of the holder of the Domain Name and advice as to the current status of the Domain Name.

On October 11, 2001, the Administrative Proceeding began.

On October 30, 2001, a response was received from the Respondent.

On November 16, 2001, "Notification of Appointment of an Administrative Panel and Projected Decision Date" ("the appointment notification") was sent to the Complainant and the Respondent. In accordance with the Respondent's request, the appointment notification informed the parties that the Administrative Panel would comprise of three panelists, Clive L. Elliott, Professor Antonio Millé and Professor Milton L. Mueller, and advised that the decision should be forwarded to WIPO by November 30, 2001, subsequently extended to December 14, 2001.

On December 5, 2001, the Complainant contacted the Center to seek to file Supplemental Material. This request was not forwarded or copied to the Respondent. On the same day the Center indicated that the decision would need to be made by the Panel.

On December 5, 2001, the Center forwarded the request to the Respondentís counsel who contacted the Center the next day objecting, on three bases:

(a) The Rules do not permit it;

It was asserted that the purported reservation of an alleged right of reply could not be made as of right and was of no legal moment.

(b) Rule 2 Violation

It was asserted that if such communications were allowed it would sanction unacceptable ex parte conduct and encourage others in the future.

(c) A grant of such relief would be inequitable

It was asserted that the Complainant had had more than sufficient time to prepare its case, perform research and the like and it would be quite unfair to allow such a late filing of submissions and/or evidence.

For reasons that will become apparent below a majority of the Panel initially felt that these communications by the Complainant should be at least considered. However, upon reflection and after considering the Respondent's submissions it was felt that it would be inappropriate to allow the request. It was felt that the Respondent's contentions had merit and that the Rules had to be complied with if the entire UDRP was to operate efficiently and fairly.

It was also felt that at a fundamental level the Complainant should have known that the Respondent was entitled to receive a copy of its request firstly because Rule 2 (h) of the Rules requires that any communications "by a Party shall be copied to the other party" and simply in terms of fair play. While the Respondent was not severely prejudiced by the ex parte communication (finding out about the request the next day) this is not the only issue, for reasons which will be apparent below. This issue is of moment in this case and we hope that our comments will serve as a reminder to other parties that participate in this type of legal process that they must recognize certain obligations.

On December 19, 2001, a decision was made.

 

4. Factual Background

The Complainant is a company operating in the wine and liqueur sector. It provides information about itself on one of its websites namely <www.torres.es>, as well as a catalogue containing information on the company itself and its Californian wineries. The Spanish family Torres founded its winemaking company in 1870 and wines produced were exported abroad shortly thereafter.

It is common ground that the Complainant owns numerous trademark registrations for TORRES in Spain, the European Union and other countries throughout the world. It is not necessary to recite the details of these registrations.

The Respondent's name is "Allan Torres," as evidenced by his birth certificate and by his United States passport. Allan Torres uses his <torres.com> domain name for email under the email address allan@torres.com.

 

5. Partiesí Contentions

A. Complainant

The Complainant claims it is one of the most prestigious marks in the wine and liqueur sector worldwide. It has a selection of the numerous awards, prizes, medals and diplomas obtained by TORRES wines and liqueurs in Spain and other countries over the last few years. The Complainant highlights that some of these distinctions were awarded by U.S. organisations, companies and associations.

The Complainant states the Respondent initially registered the Domain Name <torres.com> in the name of a so-called ALLAN TORRES. The Complainant asserts that the Respondentís intention in registering the Domain Name in the name of ALLAN TORRES was clear: to support his extortion of the Complainant or even as an argument in his defence in the event of a domain name dispute.

It is alleged that following correspondence exchanged, the holder of the Domain Name was changed to NEX SXSUPERCOMPUTER and subsequently to THE TORRES GROUP, a so-called ALLAN TORRES still appears as administrative contact. However, the Complainant notes that as far as it is aware, neither ALLAN TORRES nor THE TORRES GROUP exists. This could be a powerful point, if proved.

The Complainant says the website <www.torres.com> has not been used at all since it was created. The site has been under construction for over five years.

The Complainant notes that the hit counter is of particular interest, as the large number of visits to the site is constantly on the increase: 28,624 on November 7, 2000, 29,292 on November 23, 2000, 31,094 on January 5, 2001, and 52,141 at present as at August 3, 2001. The average number of visits per month is between 1.500 and 3.000.

The Complainant notes with surprise that five years later on the other partyís website is still under construction.

It is asserted that as soon as the Complainant learned of the Respondent's registration of the Domain Name it contacted the initial owner ALLAN TORRES on October 25, 1996, to ask him to cancel or transfer the Domain Name. From then until May 25, 1997, the partiesí lawyers corresponded with a view to settling the matter amicably. The correspondence was dropped when the lawyer of the owner of the Domain Name supposedly laid down conditions that the Complainant considered completely out of proportion.

The Complainant feels that it has been forced to file this Complaint almost four years later, given that the Respondentís intentions in registering the Domain Name are ever more obvious.

The Complainant relies on alleged instances of confusion in the Respondent's e-mail of April 7, 2001, where the Respondent is said to boast about having received e-mails from third parties who clearly seek to contact the Complainant and he even said to attach examples of the confusion that has arisen.

An e-mail of April 10, 2001, from <allan@torres.com> to <webmaster@torres.es> attached another e-mail he had received from a group of Swedish people who wished to visit the Complainant's wineries.

Finally, together with his e-mail of July 9, 2001, the Respondent attached another example of an e-mail the Respondent received at <allan@torres.com> from someone who believed that the site was owned by the Complainant and furthermore stated as follows:

"We understand the immense advantages that TORRES.COM would represent to the Torres Wineries. The coherent global image of the Torres Wineries, the unity of interests and presence of the Torresí wineries world-wide, uniform communications, advertisement capabilities and market expansion, to name just a few of the more obvious advantages, that TORRES.COM would represent to your business capabilities."

The Complainant thus submits, the above not only reveals that the Respondent is aware of the Complainantís presence worldwide, but also that he clearly seeks to do business with a domain name comprising a trademark whose fame has been recognised not only in Spain, but also in other countries, including the authorities of the European Union.

B. Respondent

The Respondent, Allan Torres, says that he registered <torres.com> in good faith and has legitimate interests in the Domain Name

The Respondent makes a number of assertions. The key ones are as follows:

The sham pretense that Allan Torres does not exist.

One of the simplest and most direct defenses under the Policy presents itself in the case where the domain name owner "has been commonly known by the domain name." It is submitted Allan Torres has a complete defense in the present action because he is "commonly known" by the name "Torres." The Complainant, represented by two very experienced trademark firms cannot claim not to be aware of the complete defense that follows from the fact that Allan Torresís surname is "Torres." In the face of this, it is submitted the Complainant struggles unconvincingly to carry out the pretense that Allan Torres (and his eponymous entity the Torres Group) does not exist. The Complainant speaks at of "a Ďso calledí ALLAN TORRES," and of "a non-existent company called THE TORRES GROUP," and then states that "the existence of ALLAN TORRES or the company THE TORRES GROUP has not been proven." The Complainant represents to this Panel that "as far as we are aware, neither ALLAN TORRES nor THE TORRES GROUP exist."

The Respondent notes that the Complainant has shown itself to be capable of searching public records in some detail (for example, the statement that the Complainant searched public records and found another Torres Group owning a similar domain name, in an apparent effort to find a "pattern of conduct" by the Respondent).

The Respondent says had the Complainant troubled itself to do so, the Complainant could readily have relieved itself of any real or imagined doubts as to the existence of Allan Torres and his entity the Torres Group. The Complainant could have done a simple web search and could have found Allan Torres on a web site of former employees of Cray Research, with the same mailing address and telephone number as has always been listed for the <torres.com> domain name. Further, it is said the Complainantís counsel could have done a simple Lexis search in the "P-Trak" database, yielding, the same name and same mailing address as has always been listed for the <torres.com> domain name. It is submitted the Complainant could likewise have done a simple Dun & Bradstreet search, showing that Torres Group dated from 1995, and showing the same mailing address as has always been listed for the <torres.com> domain name. It is submitted that the Complainant failed to make the inquiry, reasonable in the circumstances, which would have permitted it to know that Allan Torres and the Torres Group both existed. Such inquiry would have told the Complainant that its Complaint was devoid of merit. Failure to make such inquiry is an abuse of this administrative proceeding.

Finally, it is said the Complainantís own conduct belies any real or imagined doubt as to the existence of Allan Torres. On October 25, 1996, Complainant looked at the Whois record for <torres.com>, dialed Allan Torresís telephone number as listed in Whois, asked for Allan Torres, and he identified himself. In April of 1997, a woman connected with Complainantís law firm again dialed Allan Torresís telephone number as listed in Whois, asked for Allan Torres, and he identified himself. The Respondent notes these are not the actions of someone who thinks Allan Torres does not exist.

The Respondent admits that the Complainant has sent emails and posted letters to Allan Torres. Importantly, it is noted that the Complainantís lawyers have received letters from the Respondent's counsel, an officer of the Court, in which the undersigned states that the undersigned represents Allan Torres. It is asserted that if the Complainantís lawyer really thought that Allan Torres did not exist, then presumably the Complainantís lawyer would have stated in her defense that Allan Torres did not actually exist. She offered no such defense. Accordingly, it is submitted that she knew perfectly well that Allan Torres exists, having arranged for some woman connected with her law firm to speak with him ex parte by telephone just a few days earlier.

Finally, it is stated that if the Complainant somehow had some vestige of doubt as to whether Allan Torres actually exists, all it had to do was ask. The Respondent's counsel states he could readily have provided, for example, the passport and birth certificate attached to the response.

To summarize its contention, if Allan Torres actually exists, then liability under the Policy is negated due to his being "commonly known" as "Torres." If Allan Torres exists, and if Complainant knew that he exists, then Complainant knowingly brought a Complaint devoid of merit, thus abusing these proceedings. Complainantís conduct belies any claim that it does not know that Allan Torres exists. Reasonable inquiry would have permitted Complainant to know that Allan Torres exists. These proceedings have been abused.

Abuse of Process

It is said that the time line by itself shows the present case to be an abuse of the administrative proceedings. First, the conduct that supposedly justifies the present action, brought in 2001, is conduct that took place in 1995. While the Policy has no express statute of limitations, it is incumbent upon any Complainant under the Policy who is complaining about conduct from six years earlier to have some excuse, however thin, for waiting so long to complain. No excuse appears anywhere in Complainantís papers.

Forum Shopping.

It is pointed out that this is not the first forum before which the Complainant has commenced proceedings in connection with the Domain Name. On April 21, 1997, Miguel Torres S.A. formally asked Network Solutions Inc. ("NSI") to commence proceedings against Respondent under NSIís then-applicable domain name dispute resolution policy. It expressly stated that the basis for its complaint was "legal," namely an alleged violation of US law by Allan Torres. At a later time, the Complainant wrote to NSI asking that the proceedings be terminated. The present Panel is thus the second forum selected by the Complainant to hear this dispute. It is submitted that asking this Panel to take the time to hear this dispute, when a previous forum had been asked to hear the same dispute, and stood ready to do so until the Complainant changed its mind, abuses these administrative proceedings.

Accordingly, it is contended the Complainantís candor before this Panel is put into question by the fact that the Complainant failed to disclose the previous proceedings.

Concealing an important document in the face of a representation that the document was provided to the Panel.

The Complainantís Schedule of Exhibits represents to this Panel that Exhibit 25 is a copy of the correspondence exchanged between the parties until May 25, 1997. In addition, the Complainant certified that "the information contained in this Complaint is to the best of the Complainantís knowledge complete and accurate." Despite the representation and the certification, it is stated that the Complainant omitted from its papers the Respondentís lawyerís May 5, 1997 letter to the Complainantís lawyer. As mentioned below, omission of this letter conceals from this Panel the unprofessional conduct of the Complainantís counsel. In addition, omission of this letter conceals from this Panel one of the instances in which the Respondent attempted, in good faith, to learn what basis there could possibly have been for the Complainantís claim to the <torres.com> domain name. Such concealment abuses these proceedings.

Other allegations are made but are not recorded herein not being seen as necessary for the purposes of this decision.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following:

- The Domain Name is identical or confusingly similar to the trademark; and

- The Respondent has no right or legitimate interest in respect of the Domain Name; and

- The Domain Name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy sets out four illustrative circumstances that, if proved, constitute evidence of bad faith as required by paragraph 4(a)(iii) referred to above.

Paragraph 4(c) of the Policy sets out three illustrative circumstances that, if proved, constitute evidence of a right or legitimate interest as described in paragraph 4(a)(ii) referred to above.

Domain Name Identical to or Confusingly Similar

Given that the particle "com" is an attribute of the gTLD, common to all the domain names under the TLD, it is beyond question that the trademark TORRES is identical to the Domain Name <torres.com>.

Notwithstanding this, it should be noted that the Domain Name <torres.com> is equally identical to the family name "Torres", which is the one of the "Administrative Contact" and "Billing Contact" in the respective registration. It is also to be taken into account that the word "torres" is a very common expression in the Spanish language, meaning "Towers". It is also a very extended and common family name, not only in Spain but around the world. As a consequence of these circumstances, there are in the worldwide geographical nomenclature a large number of places that contain the word "Torres", for example:

- The Torres Strait in Australia (named after Luis Vaez de Torres , the first European captain to navigate these waters).

- The Torres del Paine mountain (named in this way because of its similarity with a tower).

"Torres" is a word that in its normal signification is unlikely to suggest to a normal person a wine brand. Rather, it is likely that fortresses, churches and skyscrapers (with the sad evocation of September 11, 2001) will come to mind to many.

Therefore, the formal requirement of Paragraph 4(a)(i) of the Policy is met, but in a way that really does not permit the Panel to affirm that the use of the Domain Name in dispute will be a source of confusion for Internet users. Nevertheless for the purposes of this decision we note that a Complainant does not necessarily need to formally show that confusion would occur (if the trade mark and domain name are identical) and accordingly we find that the Complainant makes out its case on this ground.

No Right or Legitimate Interest

The Panel feels that it can and should express its views in this case in a succinct and clear way. The Panel is of the unanimous view that the facts of this case are strongly in favour of the Respondent and go so far as to say that in its view the Complaint lacks real merit.

A complaint under the UDRP that the Respondent has no right or legitimate interest in the domain name and that it has been registered and used in bad faith is a serious allegation. The UDRP was set up to deal with cases of abusive use and registration of domain names and sought to make that process a fair and transparent one, allowing genuine grievances to be resolved quickly and efficiently. However, in so doing it arguably recognized that while "bad faith" was a necessary prerequisite for a successful complaint the integrity of the system itself rested on a Complainant itself acting in "good faith".

It is well recognized that it is difficult for a Panel to weigh up competing and contested evidence and all Panels have to rely to a large extent on the partiesí candor and good faith.

The requirement in Paragraph 3(xiv) of the Rule that the Complainant certifies that the information contained in its complaint is to the best of the Complainant's knowledge complete and accurateÖ. and has not been presented for an improper purposeÖ." is an important requirement in the process. It places an express requirement on a Complainant to act in good faith and to not use the UDRP for collateral purposes.

In the Panel's view it was clearly incumbent on the Complainant to support its allegations that the Respondent was fictitious. If proved or indeed even if tenable they would probably have resulted in an adverse finding against the Respondent. By the same token, a reasonable inference can be drawn in this case that the Complainant has failed to take reasonable steps to ascertain the accuracy of those allegations or deliberately withheld information from the Panel.

It is well established that Paragraph 4(c) of the Policy provides a complete defence to an allegation of lack of right or legitimate interest. That is, if the domain name holder is commonly known by the domain name, even if he or she or it has not acquired a trade mark or service mark right. Notwithstanding the Respondentís lack of activity in setting up a website we are prepared to draw the inference that the Respondent is legally registered as Mr. Torres and uses that name to identify himself both on and off the Internet.

This is a full and complete defence and one that he is entitled to assert, as he does. It is asserted by the Respondent that the Complainant must have known this and deliberately chose to avoid making the necessary inquiries or indeed made the inquiries but then failed to disclose them.

Accordingly, it is found the Complainant fails to make out on this ground.

Domain Name Registered and Being Used in Bad Faith

As indicated above we find that Mr. Torres was entitled to register a domain name corresponding to his surname and we find no reliable basis for suggesting that such conduct was or is in bad faith.

Accordingly, the Complainant fails to make out this ground.

The Respondent has requested a finding of Reverse Domain Name Hijacking and that the dispute was brought to harass the respondent. It is unambiguously the case under 4(c)(ii) of the Policy that a Respondent who is "commonly known by the domain name" has a right or legitimate interest in the registration. Complainantís only attempt to respond to this element of the policy was to try to cast doubt on the existence of Alan Torres. Its arguments to this effect, however, were so weak and so easily refuted by the materials submitted by the Respondent that the panel finds it difficult to believe that Complainant really doubted the existence of Respondent or the legitimacy of his interest in the "Torres" name. Longstanding driverís license records, the passport, and the accuracy of the contact information in the WHOIS record all were readily verifiable.

We can only conclude that the Complaint was brought in bad faith to harass the domain owner. Accordingly, we uphold the Respondentís request. We find the UDRP was abused by Complainant in this case in order to pressure an innocent registrant to yield a name that the Complainant wanted but was unwilling to acquire through legitimate means. We also observe that in this way the Complainant is dilapidating the resources of the ICANN dispute resolution service providers and forcing the Respondent to incur expenditure and face annoyances to defend his rights.

In view of the above we unanimously find the Domain Name is identical to a trade mark in which the Complainant has rights, but that the Respondent has a right or legitimate interest in the Domain Name and that it was not registered and is being used in bad faith. We also find that the Complaint was not brought in good faith, amounting to a case of Reverse Domain Name Hijacking.

 

7. Decision

The Complaint is denied.

 


 

Clive L. Elliott
Presiding Panelist

Professor Antonio Millé
Panelist

Professor Milton L. Mueller
Panelist

Dated: December 19, 2001