WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cemex v. International Cement Advisors
Case No. D2002-0454
1. The Parties
Complainant is Cemex S.A. de C.V. and Sunward Acquisitions B.V, both represented by Clarke, Modet & Co, C/ Goya 11, E-28001 Madrid, Spain, hereinafter the "Complainant".
Respondent is International Cement Advisors, S.L., Fedanci 8-10, 3 1, Sant Cugat del Valles, Barcelona, 08190, Spain, hereinafter the "Respondent".
2. Domain Name and Registrar
The domain name in dispute is <cemex.org>, hereinafter the "Domain Name".
The registrar for the Domain Name is Internet Council of Registrars (CORE-40), World Trade Center II, 20 Route de Pre-Bois, CH-1215 Geneva, Switzerland.
3. Procedural History
The essential procedural history of the administrative proceeding is as follows:
(a) Complainant initiated the proceeding by the filing of a complaint, received by the WIPO Arbitration and Mediation Center ("WIPO") on May 10, 2002. On May 14, 2002, WIPO sent an Acknowledgement of Receipt of Complaint to the Complainant.
(b) On May 14, 2002, WIPO transmitted a Request for Registrar Verification to the registrar, with the Registrarís Verification received by WIPO May 14, confirming that the Domain Name was registered through Internet Council of Registrars (CORE-40).
(c) On May 22, 2002, WIPO transmitted Notification of the Complaint and Commencement of the Administrative Proceeding to the Respondent, after having satisfied itself that the Complainant had complied with all formal requirements pursuant to 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 the Policy approved by ICANN on October 24, 1999 ("the Rules"), and the Supplemental Rules for the Policy ("the Supplemental Rules").
(d) No Response has been submitted by the Respondent. Accordingly, WIPO issued a Notification of Respondent Default on June 20, 2002.
(e) In view of the Complainantís designation of a single panelist, WIPO invited Mr. Peter Nitter to serve as a panelist. Having received his Statement of Acceptance and Declaration of Impartiality and Independence, WIPO formally appointed him as Single Panelist. The parties were notified of the Appointment of Administrative Panel on July 15, 2002.
(f) The Single Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules. The Administrative Panel shall issue its decision based on the Complaint, the Policy, the Rules and the Supplemental Rules. The proceedings have been conducted in English.
4. Factual Background
Complainant is a large international producer and marketer of cement, ready-mix concrete, aggregates and clinker.
Complainant has presented a list of countries in which the trademark Cemex is registered. In addition the Complainant has presented copies of the trademark registration in Spain, in which the Respondent is assumed to be situated.
Complainant has registered and uses the domain name <cemex.com> for their services.
The Respondent has registered the Domain Name <cemex.org>.
5. Partiesí Contentions
The Complainant asserts that:
i) The Complainantís trademark and the Domain Name are absolutely identical
The complainantís trademarks and the Domain Name at issue are absolutely identical. The defendant has transcribed the complainantís trademark into the Domain Name cemex.org. The Domain Name is formed by the addition of the registered trademark "Cemex" and the gTLD termination ".org" which does not provide any originality to the plaintiffís mark. When a trademark is composed in whole or in part of a Domain Name, neither the beginning of the URL or the TLD (.org) have any source indicating significance. "www" and "org" are merely devices that the Internet site provider uses as part of the address.
ii) Respondent has no rights or legitimate interests in the Domain Name
The Complainant holds the trademark "Cemex" in many countries including Spain, and it have listed in the complaint some of the trademarks under the name "Cemex", owned by the Complainant. Such trademarks are either admitted for registration or already granted by the respective National Patent and Trademark Offices.
The Complainant has for years vigorously defended its Intellectual Property. There is no individual or corporation other than the complainant holding trademarks rights for "Cemex" in Spain or worldwide, unless previously authorized by the complainant.
The Respondent has not been authorized by the Complainant to use the trademark "Cemex" or to hold trademark rights for "Cemex".
iii) Registration and use in bad faith
Complainant claims that his trademarks are well known in Spain and in the rest of the world. The Respondent, as a company doing business within the field of building material, must know about the trademark, "Cemex".
At the moment there is no web site corresponding to the Domain Name, thus the Respondent does not conduct any legitimate commercial or non-commercial business activity under the Domain Name. The lack of use by the Respondent of the Domain Name is an evidence of his bad faith, as it has been considered in other decisions. This situation leads the consumers to confusion and must be avoided.
The Complainant requests the Administrative Panel issue a decision that the Domain Name be transferred to the Complainant.
The Respondent has not submitted a response, and is thus in default. Respondent has neither made any submissions after the Notification of Respondent Default.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three tests that a complainant must satisfy in order to succeed. The Complainant must satisfy that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of such domain name; and
(iii) the domain name has been registered and is being used in bad faith.
6.1 Identical or confusingly similar to a trademark or a service mark in which the complainant has rights
Based on the evidence, the Panel finds that the Complainant has rights to the trademark "Cemex".
The Domain Name at issue is <cemex.org>.
The Panel considers that, as found in several earlier Panel decisions, the suffix .org does not influence on the consideration of similarity.
On the basis of these considerations, the Panel finds that the Domain Name is identical to the Complainantís trademark.
6.2 Rights or legitimate interests in the Domain Name
The Panel has considered the allegations by the Complainant as to the lack of rights or legitimate interests of the Respondent in respect of the Domain Name.
Respondent is not a representative or licensee of the Complainant, nor has Respondent any other authorization to use the Complainantís trademarks.
The Panel has visited the web site of the Respondent in order to investigate whether there could be found any evidence as to Respondents rights or legitimacy of interest with regard to the Domain Name. At present the address does not lead to any active web site, and so the Panel could not find any such evidence.
As a result of default, the Respondent has not contested the allegations put forward by the Complainant. Neither has Respondent presented any evidence of use or preparations to use the Domain Name in connection with a bona fide offering of goods or services.
The Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.
6.3 Registration and use in bad faith
The Panel has considered Complainantís allegations and evidences with regard to the Respondentís registration and use of the Domain Name in bad faith.
Complainant has put forward evidence that his trademarks are well known in Spain and in the rest of the world. The Respondent, as a company doing business within the field of building material, is probably more exposed to the trademark "Cemex" than others. The Panel finds that the trademarks of the Complainant in all probability have been known to the Respondent when registering the Domain Name.
At the moment there is no web site corresponding to the Domain Name, thus the Respondent does not conduct any legitimate commercial or non-commercial business activity under the Domain Name.
The circumstances listed in paragraph 4(b) of the Policy are not exhaustive. In this case the following circumstances indicates registration and use in bad faith:
- Respondent had prior knowledge of Complainants trademark when registering the Domain Name.
- The Domain Name does not lead to an active web site.
- The Respondent did not reply to Complainantís cease and desist letter.
By not submitting a response in this case, Respondent has failed to invoke any circumstances that could demonstrate that it did not register and use the Domain Name in bad faith.
Based on the above discussion, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith.
The Panel has found that the Domain Name <cemex.org> is identical to a trademark held by the Complainant, and that the Respondent has no rights to or legitimate interest in the Domain Name. The Panel further finds that the Domain Name has been registered and is being used in bad faith.
Therefore, pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel decides that the Domain Name <cemex.org> be transferred to the Complainant.
Peter G. Nitter
Dated: July 29, 2002