WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
J&A Garrigues Y Cia, S.R.C V. Miguel Espada
Case No. D2002-0494
1. The Parties
The Complainant is J&A Garrigues Y Cia, S.R.C., a company providing legal and tax advisory services, with registered office in Madrid, Spain, street José Abascal number 45, represented by Mr. José Maria Anguiano, Lawyer (Madrid Bar), J&A Garrigues Y Cia, S.R.C.
The Respondent is Mr. Miguel Espada, with his address at Chateau de Raissac, route de Murviel, 34500 Béziers, France.
2. The Domain Name and Registar
The disputed domain is:
<garrigues.com> with Registrar BulkRegister.com, Inc.
3. Procedural History
This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").
The Complaint was received by the Center by email on May 28, 2002, and in hardcopy on May 30, 2002.
The Complaint was acknowledged received by the Center on May 30, 2002. On the same date registration details were sought from the above-mentioned Registrar.
On May 31, 2002, the Registrar replied confirming that the disputed domain name is registered in the name of the Respondent and at the address 73, Rue Notre Dame de Nazareth, Paris, 75003, France, being a professional address of the Respondent and that the language of the Service Agreement is English.
BulkRegister.com, Inc. confirmed that the disputed domain name is locked.
On June 5, 2002, the Center satisfied itself that the Complainant complied with all formal requirements (including payment of the prescribed fee) and on that same date, the Center formally dispatched copies of the Complaint by post/courier (with enclosures) to the Respondent at the address as recorded with the Registrar and by e-mail and facsimile (without attachments). The Center also sent (i) copies of the material by the same methods to the Respondentís administrative, technical, zone and billing contacts at the addresses recorded by the Registrar, and (ii) included with the material dispatched to the Respondent and to those contacts a letter in the form of e-mail message, dated June 5, 2002, containing notification of the commencement of this administrative proceeding. The latter notification (including the complaint without attachments) was on the same date also copied to the Complainant, the Registrar and ICANN.
On June 24, 2002, the Complainantís representative submitted by e-mail and fax received by the Center on the same day, a formal request of suspension of this proceeding due to negotiations having been initiated with the Respondent. On June 25, 2002 the Center confirmed by email that the suspension was granted until July 24, 2002. With the same message, the Center notified this confirmation to the Respondent and to the Respondentís contacts, the Complainant, the Registrar and ICANN.
On July 1, 2002, the Respondent informed the Center by e-mail that he had never received hard copy of the complaint and notified his address, as being the one mentioned in Section 1 hereinabove. On the same day, the Center informed the Respondent by e-mail that a hard copy of the complaint would be sent to this address. On the same day and upon the Respondentís request, the Center confirmed to the Respondent by email that the deadline to file a response was suspended until July 24, 2002. In this message the Center informed the Respondent that this deadline would remain unchanged, since it is upon the Respondent to ask to the Whois database to update the registrantsí contact information available thereon.
The Response was received by the Center by email on July 17, 2002, and in hardcopy on July 22, 2002.
The Response was acknowledged received by the Center on July 17, 2002. In this acknowledgement, the Center reckoned that the proceeding was re-instituted from that day on since no agreement was reached between the Parties during the suspension period.
The Complainant elected to have the case decided by an administrative Panel consisting of a single member. The Respondent did not elect a three-member Panel pursuant to the Rules, Paragraph 5 (c) and the Center appointed the panel on July 25, 2002. On the same date the Center transmitted the case file to the Panel and notified the parties of the projected decision date of August 8, 2002.
The Panel finds that the Center has adhered to the Policy and the Rules in administering this case.
4. Factual Background
The Panel having a good comprehension of Spanish and French, it does not deem it necessary to require translation into English of the Complainantís and Respondentís evidence submitted in Spanish (from Complainant), French and Spanish (from Respondent).
Consequently, after having carefully examined the evidence submitted by the Parties, the Panel finds the following facts to be relevant and established:
- The Complainant is a law firm ranking first in Spain (with respect to the annual profits realised by the firm from 1999 to 2001) and, according to specialist editions mostly addressed to certain professional categories primarily of the legal field (lawyers, judges, legal counsel, etc.), of a high repute also internationally.
Reference is made to Complainantís Exhibits 22 and especially 24.
- The Complainant is the owner of the following Spanish trademarks, copies of which appear at the Complainantís Exhibits 7 to 20.
- J&A GARRIGUES nį 2045319 granted on March 5, 1997 for class 16
- J&A GARRIGUES nį 2045320 granted on February 5, 1997 for class 35
- J&A GARRIGUES nį 2045321 granted on February 5, 1997 for class 36
- J&A GARRIGUES nį 2045322 granted on February 5, 1997 for class 41
- J&A GARRIGUES nį 2045323 granted on February 5, 1997 for class 42
- GARRIGUES nį 2045325 granted on February 5, 1997 for class 35
- GARRIGUES nį 2045326 granted on February 5, 1997 for class 36
- GARRIGUES nį 2045327 granted on February 5, 1997 for class 41
- GARRIGUES nį 2045328 granted on February 5, 1997 for class 42
- J&A GARRIGUES Y COMPANIA ABOGADOS nį 2045329 granted on February 5, 1997 for class 42
- J&A GARRIGUES ABOGADOS nį 2045330 granted on February 5, 1997 for class 42
- DESPACHO GARRIGUES nį 2045331 granted on February 5, 1997 for class 42
- BUFETE GARRIGUES nį 2045332 granted on February 5, 1997 for class 42
- GARRIGUES ABOGADOS nį 2045333 granted on February 5, 1997 for class 42.
- Hence, the Complainantís aforementioned Spanish trademarks predate the registration of the disputed domain name by the Respondent.
- The Respondent does not deny that the disputed domain name remained inactive as from the date of its registration until he readdressed it to his website "http://www.raissac.com", as evidenced by Complainantís Exhibit 28.
- It is not contested that the Respondent uses the web-site "http://www.raissac.com" among other business for the marketing of home-made foodstuff and wines of the Languedoc-Roussillon region of the South of France (Respondentís Exhibit 6 especially, p. 1, 3, Exhibit 8 and Exhibit 13, p. 2).
- The word "garrigue" (plural "garrigues") is an existing French word, having a concrete signification in France describing a typical kind of vegetation met in Mediterranean countries, inter alia, in the South of France (Exhibits 1 and 2 of the Respondentís evidence).
- It is common for French companies, particularly the ones active in the food sector, to incorporate the word "garrigues" within their company brands (Exhibit 10 of the Respondentís evidence). It is therefore obvious that "garrigues" is a widespread word in France (Exhibit 10 in combination with Exhibits 1 and 2 of the Respondentís evidence).
- The name of the Respondentís company is "Garrigae". The Respondent founded together with his wife the "Garrigae" family business in July 2000 with registered office in the ĎChâteau de Raissací in the Languedoc-Roussillon area of the South of France (Exhibit 7 of the Respondentís evidence).
- The Respondent registered two trademarks in France: "Garrigae" which was registered on August 18, 2000 and "Garriga", registered in May 21, 2001 (Exhibit 11 of the Respondentís evidence).
- The domain name <garrigues.com> was registered by the Respondent on April 26, 2000 (information received by the Registrar with respect to this proceeding and Respondentís Exhibit 12). The Respondent also registered the domain name <garrigae.com> on May 6, 2000.
- "Garrigues" being the French version of the Latin word "garrigae" (plural of "garriga"), the domain name <garrigues.com> contains the equivalent of the trademark "garrigae" registered by the Respondent.
- Hence, both the registration of the Respondentís trademarks and of the disputed domain name took place two years before the Complainantís decision to use its trademark "GARRIGUES" as a domain name (March/April 2002, reference to Complaint, p. 4, first paragraph and Exhibit 26 of the Complainantís evidence).
- On April 2, 2002, the Complainantís representative contacted by telephone the Respondent in order to explain the importance for the Complainant of having the disputed domain transferred to the Complainant.
- The negotiations between the Parties on the possibility of purchase of the disputed domain name by the Complainant have progressed since the day of the initial contact between the Parties (April 2, 2002). A draft agreement has been drawn up dated April 8, 2002 (Respondentís Exhibit 14), stipulating the purchase of the domain name at the price of 9.000 EUR. However said agreement was never signed.
- Not having been able to obtain the voluntary transfer of <garrigues.com> from the Respondent, the Complainant filed the present Complaint on May 27, 2002.
5. Partiesí Contentions
The Complainant requests the Panel to issue a decision that the domain name <garrigues.com> be transferred to the Complainant. The Complainant invokes the following legal grounds as a basis for the requested relief:
Identical and confusing similarity (Policy, para. 4(a) (i))
The Complainant contends that the domain name is identical with his trademark GARRIGUES or at least confusingly similar to its other trade marks J&A GARRIGUES, J&A GARRIGUES Y COMPANIA ABOGADOS, DESPACHO GARRIGUES, BUFETE GARRIGUES, GARRIGUES AVOGADOS. In all these trademarks, the distinctive sign is the word "GARRIGUES".
All the above trademarks are registered in Spain. Furthermore, the Complainant has applied for registration as a Community trademark of "GARIGUES", approval of which is currently in process.
The Complainant refers to the Spanish legislation on Trademarks (Act 17/2001 of December 7, 2001), being currently in force in Spain, which provides under art. 6, paragraph 2 reading:
"The holder of the registered trademark may prohibit third parties, without his consent, from using in trade:
b) Any sign that, because it is identical or similar to the trademark and because the products or services are identical or similar, entails a risk of confusion of the public; the risk of confusion includes the risk of association between the sign and the trademark".
The Complainant also points out that art. 34.3.e) of the aforementioned Act stating that when the conditions of article 6 are fulfilled, it is possible to prohibit "use of the sign on telematic communication networks and as a domain name".
Moreover, the Complainant refers to a number of WIPO cases having applied similar body of Spanish legislation. These cases are Banco Espanol de Crédito, S.A. vs.Miguel Duarte Perry Vidal Taveira (Case No D2000-0018), Recoletos S.A. vs. Recoletos.com (Case No D2000-1765) and Quimica Farmaceutica Bayer vs. Alejandro Camara Acevedo (Case No 2001-1351).
In the latter case, the Complainant refers in particular to the following abstract that it contends applicable in the present case as well:
"the complainant, in addition to having its trademark duly registeredÖat the Spanish Patent and Trademark Office, is the holder of a corporate name constituting a name in use, well known in the territory of Spain, the international protection of which is set out in article 8 of the Paris Convention, in the existing wording of Trademark Act 32/1988 and in article 9.1.d) of the new text 17/2001".
Respondentís Rights and Legitimate Interests in the Domain Name (Policy, para. 4(a) (ii)).
The Complainant alleges that the Respondent is not legitimised to use the name "GARRIGUES" because he does not hold a "GARRIGUES" trademark and has no rights of any kind to use the "GARRIGUES" trademark.
The Complainant also contends that the Respondent has never used and is not today using the name <garrigues.com> to make any offer of products or services. Indeed, the domain was always completely inactive until he readdressed it to his website, "http://www.raissac.com". It is therefore obvious that the defendant lacks any lawful interest and that this is merely a registration in bad faith for the sole purpose of the sale to the lawful holder of the rights over the "GARRIGUES" brand.
In addition, the Respondent is not known on the market and he cannot be identified in any way with the well-known brand "GARRIGUES". On the contrary, J&A GARRIGUES Y CIA., S.R.C., registered holder of the "GARRIGUES" trademark, has a lawful interest over it, to operate in trade and to use it on the Internet through the pertinent domain name.
The Complainant also contends that the Respondent has never had any relation of employment or commercial relationship with J&A GARRIGUES Y CIA, S.R.C, neither does he have any kind of professional link with the "GARRIGUES" name of the brand. The Respondent is not in the information business. The Respondentís business on the Internet consists of the sale of domain names known on the Spanish and the international market.
Moreover, the Respondent is not making a lawful and fair or non-business use of the domain, since the reason why he has registered the garrigues.com domain name is unknown.
In short, the Complainant concludes that, pursuant to Paragraph 4 c) of the Policy, there is not the least to permit the affirmation that the registration or use of the garrigues.com domain has been the consequence of the exercise of any kind of legitimate right.
Bad faith registration and use (Policy, para. 4(a)(iii))
The Complainant contends that various factors demonstrate the Respondentís bad faith registration and use of the disputed domain name.
First, the Respondentís lack of interest and/or right over the registered trademark as a domain name demonstrates the existence of registration made in bad faith, with the intention (at the least) to disturb the normal use of the complainantís name.
Second, the passive holding of a domain name, as in this case, constitutes bad faith in the use of the domain name. This interpretation results from consolidated case law, in view of the large number of decisions that have followed it. The Complainant gives as examples of such WIPO decisions, D2000-0003, D2000-0239, D2000-1402, D2000-1805.
Third, following WIPO decision D2000-0823, the mere readdressing from a page without content to an actually operating website, as occurs in this case, has repeatedly been considered lack of use and consequently use in bad faith. The Complainant refers particularly to WIPO Decision Telstra Corporation Limited v. Nuclear Marshmallows, (WIPO Case No. D2000-0003).
Fourth, the Complainant contends that is applicable in this case the principle that the person who registers is in bad faith and without a lawful interest (since as in this case the defendant never introduced any content in the "http://www.garrigues.com" website) and is using the domain in bad faith, because bad faith is linked with the fact that at the time of registration he was aware that he was damaging, without lawful cause, the rights of a third party. The Complainant refers to WIPO decisions J.Garcia Carrion, S.A. v. Ma José Catalan Frias (WIPO Case No. D2000-0239), Portaventura, S.A. v Miguel Garcia Quintas y Case (WIPO Case No. D2000-0751) and Real Madrid v Lander W.C.S. (WIPO Case No. D2000-1805).
B. The Respondent
The Respondent requests the Panel to deny the remedies requested by Complainant. The Respondent invokes the following legal grounds as a basis for the requested dismissal.
Identical and confusing similarity (Policy, para. 4(a) (i))
First, the Respondent contends that the Parties are not competitors and operate in wholly different industry/service sectors. While the Respondent is a small family business producing products and services oriented around food, wine and tourism from a clearly defined geography of the South of France, the Complainant is a Spanish law firm, specialised in legal and tax advice, affiliated (or ex-affiliated) to an International network (Andersen).
This is also quite obvious from the fact that the trademarks owned by the Complainant are essentially registered for services (except Class nį 16 that describes papers and writing) in the Classes 35 (advertising), 36 (financial business), 41 (education) and 42 (scientific research) in conformity with the Nice Arrangement on the International Classification of Goods and Services. Hence, no connection can be made with wine or food products.
Second, the Respondent contends that the trademarks owned by the Complainant are not registered for the means of communication in Class 38, which is intrinsically linked with domain names. The Respondent refers accordingly to WIPO decision, Danone vs. B&D, (Case No D2000-1801).
On the basis of the first and second arguments, the Respondent contends that there is no likelihood of confusion between the Respondent and the Complainantís businesses and associated brands and trademarks.
Third, the Complainant, J&A GARRIGUES Y CIA ABOGADOS, are well known as business lawyers in their country, Spain. However, the company is not particularly well-known in France.
On the contrary, the word "garrigue" (singular) or most commonly "garrigues" (plural) is a pure French word, having a concrete signification in French. "Garrigues" is indeed well recognised as a French word by visitors and those with a working knowledge of the country.
Consequently, web visitors immediately know what "garrigues" correspond to in France and no confusion can result with Spanish lawyers. The Respondent refers accordingly to WIPO decision Nomen vs. Gilles Chenaille, D2001-1257.
Fourth, the Respondent contends that most of the brands belonging to the Complainant are described as "J&A GARRIGUES" or "J&A GARRIGUES Y CIA ABOGADOS". The word "GARRIGUES" is rarely used alone. The Complainant is more known as "J&A GARRIGUES Y CIA ABOGADOS" rather than "GARRIGUES".
Fifth, the signs have quite different signification:
- In "J&A GARRIGUES Y CIA ABOGADOS", it is clear that "GARRIGUES" (pronounced Garriguess [s], such as "CIA", is a proper noun, a patronymic name. "J&A" are the initials of the first names.
- On the contrary, "garrigues" (pronounced Garrigue [ ¶ ] or, in the South of France, Garrigueu [ Æ ] ) is a common noun, which describes a typical French environment as seen above.
The Respondent further contends that because of this linguistic and signification differences, "GARRIGUES" is always written in upper case letters in the trademarks owned by the Complainant, whereas the word "garrigues" used by the Respondent is written in lower case letters, like any common noun.
For the reasons outlined above, the Respondent concludes that no confusion can result for people between the domain name of the Respondent and the trademarks of the Complainant.
Respondentís Rights and Legitimate Interests in the Domain Name (Policy, para. 4(a) (ii)).
The Respondent contends, that contrary to the Complainantís allegations, the Respondent has rights and legitimate interests in the domain name.
First, since "garrigues" is a widespread French word that designs a specific landscape typical to the South of France, it is common for companies dealing with local products such as wine, food and other cultural products and services linked to the region.
Following this culture, the Respondent decided to name the company "Garrigae", being the Latin version of the "les garrigues". The choice of this name was extremely obvious because of the area where the company is based, surrounded by garrigues, and because of the activity of the company, specialising in products and services typical of the Languedoc-Roussillon region.
Second, seeking to protect its company brand, the Respondent registered two trademarks in France: "garrigae" (on August 18, 2000) and "garriga" (on May 21, 2001).
Third, the Respondent registered the domain names <garrigae.com> and <garrigues.com> in April 2000.
Fourth, the Respondent contends that his company, though relatively new, has already grown in a significant way. Garrigae products are currently sold in France, England and USA through prestigious outlets.
However, if Garrigae has not yet built and activated various websites, it is because realising a return on such an investment is dependent on the business reaching a certain critical mass. Accordingly, the Respondent contends that, before activating any websites deploying the companyís activities, he had to ensure first that the company was on a solid financial footing prior to developing the online media. The Respondent also notes that this was a business decision that the Respondent took without any prior knowledge or consideration of the Complainantís existence. In this respect, the Respondent contends that he did not know the Spanish law firm before the latter filed his claim. On the other hand, it is quite usual to register a brand or a domain name at the moment when the overall brand name is chosen and to bring it into effect some months or years after, when it is economically or strategically appropriate. There is certainly no obligation to activate the domain name at the precise moment when it is registered.
Fifth, the domain name <garrigues.com> is currently activated. There is evidence of demonstrable use, the garrigae name corresponding to the domain name(s) in connection with a bona fide offering of goods or services, on the "www.raissac.com" web site.
The Garrigae business is intrinsically associated with the Chateau De Raissac. Physically located on the grounds of the Chateau de Raissac, the Respondent contends that Garrigae will benefit greatly from its association with the renowned Chateau. The Chateauís famous wines, architecture, world-renowned Ceramics museum, and indeed the old and honourable names of the proprietor all contribute to significant passing trade to be exploited by Garrigae.
In this respect, the Respondent contends that the success of the Garrigae business is predicated upon a complimentary online/offline offering, whereby the online sales and marketing promote the products and services provided out of the Chateau. To this end, the domain names registered have been bought for business and e-commerce purposes linked to Garrigae tourism projects at Château de Raissac.
Bad faith registration (Policy, para. 4(a)(iii))
The Respondent contends that the domain name in question was clearly not registered by Respondent with the intention of disrupting the Complainantís business.
First, the Complainant was in fact entirely unknown to the Respondent before being contacted by the Complainant by telephone on April 2, 2002.
Moreover, the Complainantís allegations that its trademark is famous, is not supported by any evidence to that effect, particularly in France, where the Respondent is located. The Respondent refers in this respect to WIPO decision, Etam vs. Alberta Hot Rods, (Case No. D2000-1654) and Slumberland/Dotcomway (Case No. D2000-0803).
According to the Respondent, the Complainant is maybe known in its country, but it fails to prove any significant brand recognition in France. The Andersen network, of which the Complainant is a member is relatively well known but J&A GARRIGUES Y CIA is not a recognised brand in France.
Second, the Respondent contends that the domain name was registered by the Respondent in 2000, that is two years before the Complainant decided to change its name, as a consequence of the decision to abandon the suffix "Andersen" after the Enron scandal (2002).
In the Respondentís opinion, this chronology is alone sufficient to demonstrate that there is no malice in the registering of the domain name by the Respondent.
Third, the Respondent registered the domain name <garrigues.com> at the same moment when he registered its Latin translation <garrigae.com>. The goal was to suggest the country where the Respondent is based, such as many people coming from this area are used to do.
Bad faith use (Policy, para. 4(a)(iii))
The Respondent contends that he has not registered the domain name in view of selling it to the Complainant.
First, the Respondent purports that such bad faith cannot result from the sporadic discussions he was engaged in and which were initiated by the Complainant. Such discussions do not signify bad faith. The Respondentís offer to discuss does not constitute bad faith. The Respondent refers in this respect to WIPO Decision, Etam v. Alberta Hot Rods, Case No. 2000-1654.
Accordingly, the Respondent contends that he had not previously attempted to convert the domain name into cash before the Complainant first picked a quarrel with the Respondent in this regard. The Respondent only tried to find an amicable solution to the suit initiated by the Complainant, and never acted as a cyber squatter, as it is wrongly asserted.
Second, the Respondent contends that the Complainant initiated discussions urging the Respondent to sell the domain name. In order to coerce the Respondent to sell the domain name for a very cheap price, the Complainant issued threats and attempted to exploit its skills as a lawyer. The Respondent pinpoints arguments of the Complainant that there was little point in the Respondent resisting, since the legal expertise of the Complainant would ensure victory in the course of this proceeding.
Third, the Respondent purports that the Complainant continued to aggressively pursue the purchase of the domain name in question, proposing an amount of 9000 EUR in a draft contract sent on April 4th, 2002 by email to the Respondent.
Fourth, the Respondent contends that he did not want at that time and does not want even now to sell the said domain name. However, the Complainant continues to put further pressure on the Respondent. Moreover, the Respondent contends to receive everyday lots of emails carrying out confidential information and addressed to the Complainant with extension "@garrigues.com" instead of "@garriguesandersen.com", despite the Respondentís request to the Complainant (dated of April 29, 2002) asking for this process to be stopped.
In conclusion, the Respondent contends that he was urged by the Complainant to sell the domain name and that the Complainant has been using tricky and coercive methods (threats, insults), as well as inaccurate information intended to distort the facts of the case.
6. Discussion and Findings
Under paragraph 15(a) of the Rules, the Panel must decide this Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
To qualify for transfer, a Complainant must prove each element of paragraph 4(a) of the Policy, namely:
(i) The disputed 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 the domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
Identity or confusing similarity
Essential or virtual identity is sufficient for the purposes of the Policy. See The Stanley Works and Stanley Logistics, Inc v. Camp Creek. Co., Inc. (WIPO Case No. D2000-0113), Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd. (WIPO Case No. D2000-0802) and Nokia Corporation v. Nokiagirls.com a.k.a IBCC (WIPO Case No. D2000-0102).
The test of confusing similarity under the Policy, unlike trademark infringement or unfair competition cases, is usually confined to a consideration of the disputed domain name and the trademark (irrespective of the goods and/or services the trade mark has been registered for and of the differences in business the Complainant and the Respondent are involved in). See Banco Atlantico S.A. v. Infomax 2020 S.L. (WIPO Case No D2000-0795), AltaVista Company v. S.M.A., Inc. (WIPO Case No. D2000-0927), Porto Chico Stores, Inc. v. Otavio Zambon (WIPO Case No. D2000-1270), Gateway, Inc. v. Pixelera.com, Inc. (WIPO Case No. D2000-0109), America Online Inc. v. Anson Chan (WIPO Case No. D2001-0004), Cimcities, LLC v. John Zuccarini d/b/a Cupcake Patrol (WIPO Case No. D2001-0491) and Playboy Enterprises International, Inc. v. Federico Concas, a.k.a John Smith, a.k.a. Orf3vsa (WIPO Case No. D2001-0745).
In the present case, the disputed domain name is undeniably identical to four of the Complainantís Spanish trademarks, granted on February 5, 1997 (see above under section 4).
The Respondentís contention that the word "garrigues" as associated with the Complainantís business is pronounced in a different way and is written in capital letters ("GARRIGUES") by contrast to the meaning and different pronunciation that the same word has in relation to the Respondentís business, does not really come into play when an Internet user types <garrigues.com> in his browser. In other words, in the Internet environment, the possible differences in the letter form and pronunciation of the word "garrigues" are not per se sufficient to deny identity or confusing similarity between the Complainantís trademark and the disputed domain name.
The Panel therefore holds that the Complainant proves that the domain name <garrigues.com> is identical to the Complainantís "GARRIGUES" trademarks.
Based upon the evidence submitted the Panel finds that (i) "garrigue" (singular) or most commonly "garrigues" (plural) has a concrete signification in the French language (ref.: Exhibit 1 and 2 submitted by Respondent), (ii) can be of common knowledge to French people, as well as foreigners with a working knowledge of the country and (iii) is of widespread use by companies engaged in various business fields in the South of France (ref.: Exhibit 10 of the Respondent). The Panel furthermore accepts that the word "garrigae" is the Latin equivalent of the word "garrigues" (ref.: Exhibit 1 of the Respondent).
From the evidence submitted by the Respondent, it is furthermore clear that within a period of 4 months, the Respondent registered two domain names, <garrigae.com> and <guarrigues.com> (April-June 2000), founded a company under the name "Garrigae" (July 2000) and registered the French trademarks "garrigae" and "garriga".
Article 4, (c) of the Rules enumerates certain circumstances that demonstrate the legitimate interests in a domain name. It clearly states that these circumstances, in particular but without limitation, indicate legitimate interest. The Panel may therefore hold that the Respondent has a legitimate interest, based on other circumstances.
The Panel holds that the Respondent has a legitimate interest in registering the domain name <garrigues.com> since it is the French equivalent of his (Latin) company name and his (Latin) trademark in connection to which the Respondent appears to be engaged in a bona fide offering of goods.
As a consequence, the Panel cannot but conclude that the Complainant does not prove that the Respondent has no rights or legitimate interests in respect of the domain name at stake.
According to article 4, (a), iii of the Policy, the Complainant must prove that the domain name has been registered and is being used in bad faith.
Bad Faith Registration
The Complainant submits no evidence to demonstrate that his trademark(s) is (are) in fact widely known in countries other than Spain, particularly in France where the Respondent is established. Moreover, the Complainantís trademarks are currently only registered in Spain.
Furthermore, in support of its leading position in the provision of legal services in Spain, the Complainant submits evidence exclusively extracted from (Spanish) specialist editions, particularly aimed at certain professional categories, primarily of the legal profession (lawyers, judges, legal counsel etc.), which are not easily accessible to the wide public. Along the same lines, the "Global Counsel", edition 2000 must also be considered as a specialist edition, being mostly of concern to the legal profession or to laymen seeking recommended names for legal advice.
Accordingly, the Panel holds that "GARRIGUES" as the Complainantís brand name must indeed be well known to people of the legal profession in Spain and maybe abroad. However, the Complainant fails to submit adequate evidence that the knowledge of his trademark is actually widespread to the general public at an international level or at least in France.
Given the specialist field to which the "GARRIGUES" trademark of the Complainant relates, the Complainant fails to establish that Respondent should reasonably have had either actual or constructive knowledge of this trademark in France at the time he registered the domain name at stake (see Etam plc vs. Alberta Hot Rods, Case nį. D2000-1654, also, VZ VermögensZentrum AG vs. Anything.com, Case nį D2000-0527, Allocation Network GmbH vs. Gregory, Case nį D2000-0016).
Therefore, and even abstraction made of the fact that the Respondent has at least a legitimate interest in the domain name at stake, the Panel holds that the Complainant does not prove that the Respondent registered the domain name in bad faith.
Bad Faith use
In view of the fact that the Complainant does not prove that the domain name was registered in bad faith, there is no need to further investigate whether or not the domain name is being used in bad faith by the Respondent.
The Panel denies the Complainantís request that the domain name be transferred from the Respondent to the Complainant.
Yves Van Couter
Dated: August 8, 2002