WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Heineken España, SA v. Kevin Carreras
Case No. D2001-1313
1. The Parties
Complainant is Heineken España, SA having registered offices in Avenida de Andalucía, 1 - 41007 Seville, SPAIN.
The Respondent is Kevin Carreras, PO Box 454, Gibraltar, UK.
2. The Domain Name and Registrar
This dispute concerns the domain name <cruzcampo.org> (hereinafter referred to also as the "Domain Name"). The registrar is Melbourne IT.
3. Procedural History
The WIPO Arbitration and Mediation Center ("the Center") received a complaint (hereinafter the "Complaint") by email on October 30, 2001, and in hardcopy and exhibits on November 2, 2001. On November 2, 2001, the Center transmitted via email to Melbourne IT, a request for registrar verification in connection with this case. On November 7, 2001, Melbourne IT transmitted via email to the Center, Melbourne IT 's Verification Response, confirming that the registrant is Kevin Carreras and that the Domain Name registration is in "active" status.
Having verified that the Complaint satisfied all the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), the Center transmitted on November 19, 2001, to Kevin Carreras the Notification of Complaint and Commencement of the Administrative Proceeding by post (with attachment), and by fax and email (without enclosures). On the same day, the Center transmitted via email, copies of the foregoing documents to Melbourne IT.
On December 10, 2001, having received no Response from the Respondent, the Center issued a Notification of Respondent Default. No reply by Respondent to the Notification of Respondent Default was received.
On December 14, 2001, in view of the Complainant’s designation of a single member panel the Center invited Mr. Luca Barbero to serve as a panelist and transmitted to him the Request for Declaration of Impartiality and Independence and a Statement of Acceptance.
Having received Mr. Luca Barbero's Statement of Acceptance and Declaration of Impartiality and Independence, the Center transmitted on December 20, 2001, to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date for January 3, 2002, in which Mr. Luca Barbero was formally appointed as the Sole Panelist. The Sole Panelist finds that the Administrative Panel (hereinafter referred to also as the "Panel") was properly constituted and appointed in accordance with the Rules and Supplemental Rules.
Having reviewed the communication records in the case file, the Panel finds that the Center has discharged its responsibility under Paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."
Therefore, the Panel shall issue the Decision on the basis of the Complaint, the Policy, the Rules, the Supplemental Rules and any rules and principles of law deemed applicable, without the benefit of any Response from Respondent.
4. Factual Background
The Complaint is based on a number of registrations for the trademarks CRUZCAMPO.
The Respondent registered the domain name <cruzcampo.org> on July 15, 2000.
5. Parties’ Contentions
The Complainant is the owner of a number of CRUZCAMPO Spanish trademark registrations and both of an international and of a Community trademark registration in various classes of goods and services.
Complainant informs the Panel that also according to the web site "Mundo Cervecero" (http://www.geocities.com/jvilaper/cervezas.htm), the brewery Grupo Cruzcampo, which belongs to the Heineken Group, is considered as the leading brewing company in Spain, "Cruzcampo beer may be found anywhere in Spain".
Complainant indicates that specialized companies have certified the amounts of pesetas invested during the years 1999 and 2000 in media advertising (newspapers, magazines, television, radio, sponsorship of events, etc) for the diffusion of the brand CRUZCAMPO providing the Panel with copies of the reports; during this period advertising was particularly significant in various TV channels, both state, national and regional (TVE1, La 2, Canal Sur, Canal 9, ETB 2, TVM9) and private (Antena 3, Tele 5) and in daily newspapers ABC, El Mundo, Expansión, Actualidad Económica, El Correo de Andalucía, Diario de Andalucía, Diario Vasco, Diario Las Palmas, Norte de Castilla, Provincias Valencia y Mediterráneo; the Sunday supplements Blanco y Negro and El País Semanal; and the radio channels SER and COPE.
Furthermore, during the Universal Exhibition held in Seville in 1992 (EXPO ’92) the brand CRUZCAMPO had its own exhibition pavilion; the brand CRUZCAMPO sponsored also the Programme for Aid to Spanish Olympic Sports and important international events such as the Olympic Games held in Atlanta in 1996 and in Sidney in the year 2000.
The Complainant provided the panel with proofs of consistent advertising and commercial investment on "cruzcampo" which, according to the Complainant, should be considered well known in Spain, including in Andalusia, and internationally in the brewing field.
The Complainant furthermore states that the Respondent is not the registered owner of any trademark CRUZCAMPO. This name does not identify any company, product or service for which the Respondent may be known, so that the same does not have any right or legal interest to use the name CRUZCAMPO when identifying the products or services. In addition, since the time of registration, Respondent’s web site has been under construction and he does not appear to have started a legitimate business in the field.
The Complainant states that the Domain Name was registered in bad faith, with the only aim of obtaining financial benefit by trying to invite the Complainant to make a financial offer to the Respondent to change the Domain Name. CRUZCAMPO is a particularly famous brand name in the beer field; the activities of the Complainant cover the geographic area including the seat of the Respondent at the time the Domain Name was registered (Gibraltar is located in the south coast of Spain, bordering with Andalusia).
In accordance with Paragraph 4(b)(i) of the Policy, for the reasons described above, the Complainant requests "the transfer of the domain <cruzcampo.org> in favour of the complainant, the company Heineken España, SA."
Respondent has not contested the allegations of the Complainant and is in default.
6. Discussion and Findings
According to paragraph 15(a) of the Rules "A Panel shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy directs that 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 a service 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 is being used in bad faith.
6.1. Domain name identical or confusingly similar
The Complainant has provided evidence of ownership of several trademark registrations for CRUZCAMPO, including the identical Community trademark (word mark) No. 728485 of May 4, 1999 in classes 32, 33 and 42.
In view of the above, the Panel finds that the Complainant has proved that the Domain Name is identical to the trademark of the Complainant according paragraph 4(a)(i) of the ICANN Policy.
6.2. Rights and legitimate interest
By not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the Domain Name.
There is no relation, disclosed to the Panel, between the Respondent and the Complainant and Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use Complainant’s trademark and name under any circumstance.
The Domain Name points at an under-construction page and no evidence is shown that Respondent has any rights or legitimate interests in respect of the Domain Name, other than the registration. The Panel finds that the mere registration of a domain name identical to a trademark registration is not, by itself, sufficient to establish rights or a legitimate interest in the domain name (See also i.a. Barney’s Inc. v. BNY Bulletin Board, WIPO Case No. D2000-0059 and Pharmacia & Upjohn Company v. Moreonline, WIPO Case No. D2000-0134).
The Panel therefore finds that Respondent has no rights or legitimate interests in respect of the Domain Name, according to paragraph 4(a)(ii) of the ICANN Policy.
6.3. Registration and Use in Bad Faith
For the purpose of Paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on the holder’s website or location.
The Panel is not limited by the paragraph 4(b) to determine whether the domain name was registered and used in bad faith and the Panel has therefore taken into consideration also the following further particular circumstances for the assessment of bad faith.
Pursuant to prior interpretation of the UDRP in cases of passive holding of domain names first provided in Telstra Corporation Limited v. Nuclear Marshmallows (WIPO Case No. D2000-0003) and in a number of following decisions such as e.g. Ingersoll-Rand v. Frank Gully (WIPO Case No. D2000-0021); Compaq Computer Corp. v. Boris Beric (WIPO Case No. D2000-0042); Guerlain, S.A. v. Peikang (WIPO Case No. D2000-0055); Revlon Consumer Products Corporation v. Yoram Yosef aka Joe Goldman (WIPO Case No. D2000-0468); Banco de Chile S.A. v. Eric S. Bord, Esq. (WIPO Case No. D2001-0695); Telstra Corporation Limited v. Norman Fry (WIPO Case No. D2001-0757), the passive holding of a domain name may constitute a "use" in the sense of paragraph 4(a)(iii) of the Policy. The concept of a domain name being used in bad faith should not be limited to positive action; rather, inaction for a significant amount of time - in the present case the contested domain name was registered since July 15, 2000 - is to be considered included within the concept.
The Respondent, failing to respond to the Complaint at issue or to deny any of its allegations, has not provided any evidence of nor alleged any actual or contemplated good faith use of the Domain Name. It is not possible for the Panel to conceive any legitimate, actual or contemplated, active use of the Domain Name by the Respondent. Therefore, the registration of the Domain Name identical to a registered well-known trademark should be considered for speculative purposes (see J. Crew International, Inc. v. crew.com, WIPO Case No. D2000-0054).
Complainant’s trademark is well-known in Spain including in Andalusia which is bordering Gibraltar where the Respondent is based (see also Heineken España, S.A. v. Domingo González Ruiz, WIPO Case No. D2001-1202 where it was found that "… En el presente caso, de la evidente notoriedad de la marca "cruzcampo" junto con el hecho de que el demandado reside en la provincia donde el demandante tiene su sede social, y que es territorio abonado por su prestigio o -al menos- por su actividad publicitaria y comercial, debe inferirse que el demandado tenía perfecto conocimiento de la previa existencia de la marca cervecera)". Therefore, the Respondent was or should have been aware at the time of registration of Complainant’s rights on the trademark CRUZCAMPO, also on account of Complainant’s extensive advertising in the area. See WIPO Case No. D2000-0059, Barney’s Inc. v. BNY Bulletin Board, where it was found that "Complainant’s high profile presence in the retail market and the fame of Complainant’s mark would further tend to indicate that Respondent was aware of Complainant’s rights therein".
Similar conclusions were found e.g. in Telstra Corporation Limited v. Norman Fry (WIPO Case No. D2001-0757) "the Respondent's passive holding of the domain … in combination with having no legitimate rights or interest in the domain name and the strong likelihood of being aware of Telstra's reputation, can be interpreted as bad faith use for the purposes of paragraph 4 a (iii)".
Furthermore, it should be considered that any subsequent use by the Respondent of the contested Domain Name would necessarily create a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of a Respondent's web site in the sense of paragraph 4(b)(iv) of the Policy (see i.a. Banca Sella S.p.A. v. Mr. Paolo Parente, WIPO Case No. D2000-1157; Veuve Clicquot Ponsardin v. The Polygenix Group Ltd., WIPO Case No. D2000-0163).
In view of the above, the Panel finds that Respondent registered and used the Domain Name in bad faith, according to paragraph 4(a)(iii) of the ICANN Policy.
In light of the foregoing, the Panel decides that the Domain Name registered by the Respondent is identical to the Complainant's trademarks, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name has been registered and used in bad faith. Accordingly, the Panel requires that the registration of the domain name <cruzcampo.org> be transferred to the Complainant.
Dated: January 3, 2002