WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compañía de Seguros Adeslas, S.A. v. Adeslas.com
Case No. D2002-0583
1. The Parties
Complainant is Compañía de Seguros Adeslas, S.A., with business address in calle Príncipe de Vergara, Madrid, Spain.
Respondent is Adeslas.com, Postboks 145, Verdal, 7650, Norway.
2. The Domain name and Registrars
The domain name at issue is <adeslas.com> and the Registrar is BulkRegister.com, Baltimore, MD 21202, United States of America.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received a complaint (hereinafter the Complaint) by email on June 24, 2002, and in hardcopy and exhibits on June 25, 2002. On June 25, 2002, the Center acknowledged receipt. On June 25, 2002, the Center transmitted via email to BulkRegister.com a request for registrar’s verification in connection with this case. On the same date, BulkRegister.com transmitted via email to the Center, the Verification Responses, confirming the respective registrant’s data and that the Domain Name registrations are in "active" status.
The Center transmitted on July 4, 2002, to the Respondent the Notification of Complaint and Commencement of the Administrative Proceeding and on July 26, 2002, the Notification of the Respondent default.
On July 29, 2002, the Center invited Mr. Luca Barbero to serve as a panelist in the instant case and, having received his Statement of Acceptance and Declaration of Impartiality and Independence, the Center transmitted on August 5, 2002, to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, 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.
4. Factual Background
The Complaint is based i.a. on the Spanish trademark registrations No 1,315,523 and No. 1,315,532, ADESLAS, granted on January 2, 1991, and the Community Trademark registration No. 000816397 of March 29, 1999 (copy of registration certificates were enclosed to the Complaint).
The Respondent registered the domain name <adeslas.com> on October 12, 2000.
5. Parties’ Contentions
The Complainant states that ADESLAS is the trademark that has been used by the company Compañía de Seguros Adeslas, S.A. since 1989 in connection with the commercialization of health assistance services as well as assistance for travel overseas. The Complainant declares that, at present, the number of clients of said company exceeds 1,600,000 policy holders and that this circumstance can be considered as a proof that the ADESLAS has acquired renown and fame with respect to health services, together with Asisa and Sanitas, in both Spanish territory and abroad.
The Complainant reports that, since it started, the Compañía de Seguros Adeslas, S.A. has run important advertising campaigns in audiovisual media as well as on the radio and in the press using the ADESLAS trademark. According to the Complainant this is a further evidence that the aforementioned trademark is internationally known and related to the aforementioned insurance company.
In addition Compañía de Seguros Adeslas, S.A. is the registered owner of some national, community and international trademarks including the word ADESLAS to designate diverse products and services (a list of national, international and community trademars in the name of the Compañía de Seguros Adeslas, S.A. was enclosed to the Complaint).
The Complainant has registered the domain name <adeslas.es> since March 15, 1996. This domain is linked to a web page through which the insurance company offers information and services such as the sale of on-line insurance.
In 1998, the Compañía de Seguros Adeslas, tried to apply for the registration of the domain name <adeslas.com> but it was registered by Mr. Manuel Monterde Molina, Cabanyal, 12, 46400 Cullera, Valencia, Spain. On August 3, 1998, the Domain Name was linked to a web page referring to a company Web 5000, S.L., but, without any reference to the word adeslas.
The Complainant then sent to Mr. Manuel Monterde Molina a warning letter requesting to cease any use of the Domain Name. On September 7, 1998, Mr. Monterde answered to the warning letter stating that he was available to "hold any conversations that the Compañía de Seguros Adeslas, S.A. considered opportune".
On the grounds of the above, the Compañía de Seguros Adeslas, S.A. filed a complaint before Network Solutions. However, this procedure could not be concluded as, on December 7, 1999, Network Solutions informed the Complainant that it was impossible to continue with the case as the regulations for this type of dispute had been changed and the procedure could only be handled on the basis of the new regulations on Uniform Policy on the Solution of Controversies, in force since January 1, 2000.
On April 17, 2000, the <adeslas.com> web page appeared as modified again, showing a series of moving letters on a white background which formed the word "adeslas" as an acronym for "asesoría de empresas solares locales apartamentos sociedades" (consultancy of companies, plots, premises, apartments, companies). The Complainant highlights that words which appeared had no logical relationship and that the only aim in linking them one after another was to make the first letter of each of the words coincide with the letters that formed the acronym.
At present, the Domain Name is pointing to the URL "www.gueb.com/gueb.asp?dom=adeslas.com", at the top of which can be found in capital letters the denomination <gueb.com> containing many links, including to pornographic sites. In addition, the owner of the domain name <adeslas.com> is no longer Mr. Manuel Monterde Molina, but a not better specified entity Adeslas.com.
Following said change in registered ownership of the Domain Name, the Complainant tried to get in touch with the current owner, but it was impossible, since the data appear to be incorrect or false. This circumstance was confirmed by the Norwegian Embassy which certified that aforementioned data are unknown. The Panels notes that the verification was conducted on "VI Green" (the admin c data) and not on "Adeslas.com" at Postboks 145, Verdal, 7650, Norway but the address is anyway the same for both entities.
According to the Complainant, the current owner of the Domain Name com is trying to hide his identity showing incorrect or non-existent data, which makes impossible for third parties to establish any kind of contact with the owner of the Domain Name.
The Complainant did also some further investigations on the domain name <gueb.com>. The registrant appears to be Mr. Javier García, Apartado de Correos, 5, Playa del Inglés, Gran Canaria, 35100, Spain. According to the investigations carried out by the Complainant, these data correspond to those of the registrant of a number of domain names corresponding or similar to famous and renowned trademark; said subject appears also as the Respondent in other UDRP procedures such as Cortefiel, S.A. v. Miguel García Quintas, WIPO Case No. D2000-0140, Parfums Christian Dior v. Javier García Quintas and Christiandior.net, WIPO Case No. D2000-0226, Canal Plus v. Canal Latino Plus, S.L., WIPO Case No. D2001-1227.
The Complainant concludes that the above circumstances should be considered as evidence that the Respondent is intentionally hiding his identity, preventing Compañía de Seguros Adeslas, S.A. from calling on him to cease to use the domain name. The Complainant claims also that in the absence of any type of evidence as to the existence of the registrant of the Domain Name, the Respondent cannot be allowed to maintain the right to own and use the Domain, offering also pornographic link and thus discrediting the image of the Compañía de Seguros Adeslas, S.A. and the famous and renowned trademark ADESLAS. The Complainant highlights that the Respondent could not be not aware of the trademark ADESLAS on account of its renown and fame, being used and protected in several foreign and European Community countries. The absolute identity between the Domain Name and the internationally renowned trademark ADESLAS and to the domain name <adeslas.es> may create confusion with respect to the activity and the services of the Complainant.
The Complainant furthermore states that the Respondent has no legitimate right or interest in the domain name <adeslas.com>, since the insurance company has never authorized the registration of the trademark as a domain name. The Complainant states also the there is no evidence of any legitimate right or interest of the Respondent, since the web page makes no reference to the denomination "adeslas".
Finally, the Complainant highlights that the events which occurred are evidence enough to consider that the registration of the Domain Name <adeslas.com> was obtained in bad faith and with the aim of preventing the Compañía de Seguros Adeslas, S.A. from registering and using the ADESLAS trademark as a domain name under the first level domain .com and of profiting, taking into account that he is using the domain name <adeslas.com>, which coincides with another company’s trademark which is internationally renowned, in order to attract web surfers and to redirect users to the page located at the URL "www.gueb.com/gueb.asp?dom=adeslas.com".
Respondent has not contested the allegations of the Complainant in a Response filed according to article 5 of the ICANN Rules for Uniform Domain Name Dispute Resolution Policy and is therefore 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 inter alia of the Spanish trademark registrations No. 1,315,523 and No. 1,315,532, ADESLAS, granted on January 2, 1991, and the Community Trademark registration No. 000816397 of March 9, 1999 (copy of registration certificates were enclosed to the Complaint).
The Domain name is identical to the Complainant’s trademark.
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 to paragraph 4(a)(i) of the ICANN Policy.
6.2. Rights and Legitimate Interest
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the dispute domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy that :
(a) He has made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute;
(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
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 was registered in the name of a not better specified homonymous entity Adeslas.com. However, in the absence of any evidence of the existence of this entity, this circumstance per se does not create a right or legitimate interest in the Domain Name.
The Panel is under the impression that the Respondent, by using the name Adeslas.com as registrant name for the domain name <adeslas.com>, may have tried to mislead the public as if the Respondent has the right and a legitimate interest to use the Domain Name (see WIPO Case No. D2000-0226, Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net).
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.
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 a 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 Complainant showed evidence of some actions taken with respect to the Domain Name at the time it was in the name of Mr. Monterde Molina, by sending a warning letter requesting to cease any use of the Domain Name and starting a dispute resolution procedure at Network Solution. The Complainant has also shown evidence of a bad faith use of the Domain Name through a web page consisting of moving letters which formed the word ADESLAS as an acronym, but it was referring to a period before the transfer of ownership to the current owner and the Complainant has not shown any convincing evidence of any relationship between the old registrant Mr. Monterde Molina and the current subject Adeslas.com.
The complainant has indicated that since the Domain Name is currently pointing at "www.gueb.com/gueb.asp?dom=adeslas.com" the present owner of the Domain Name <adeslas.com> should be the same owner of <gueb.com>, which is a famous cybersquatter Javier Garcia (against which several WIPO arbitration decision were already awarded). It has to be noted that, the mere forwarding of the Domain Name to a web site corresponding to a domain name owned by a cybersquatter cannot be considered per se as a exhaustive evidence that they are both owned by the same subject, even though such occurrence may not be excluded.
But the Panel could also find a common reference between all the above-mentioned subjects in the nameservers (ns1.servidoresdns.net and ns2.servidoresdns.net), located in Spain, which appear respectively in the whois record of the Domain Name, in the whois record of the <gueb.com> domain name, in the whois record of the domain name corresponding the e-mail address of the admin-c V.I. Green <butikk.com> and in the whois record of the domain name corresponding the e-mail address of the Respondent in some mentioned WIPO Cases <laplata.com>.
The current web page to which the Domain Name is forwarded is in Spanish and intended to a Spanish public since all the links advertised are to Spanish web sites, despite of the alleged Norwegian nationality of the Respondent. The Complainant has proved that its trademark can be considered as a well-known trademark at least in Spain.
It cannot therefore be a mere coincidence that a name well-known to a Spanish public and, on account of this, likely object of search by the Spanish public, corresponds to a domain name registered by an alleged Norwegian Company but pointing to a web page only in Spanish, where Spanish pornographic web site is also advertised with a relevant banner.
The Panel therefore finds that the Respondent was or should have been aware of Complainant’s rights in the trademark at the time of registration of <adeslas.com> and that such an 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.
The list reported above is not exhaustive to determine whether the domain name was registered and is being used in bad faith and the panel may refer also to other circumstances to ascertain bad faith.
The Complainant submitted evidence that the entity VI Green (the Admin C contact of the Domain Name) is not known by the Norwegian Embassy. From additional correspondence, the Panel was informed that "the copy of the complaint that Adeslas sent to the respondent, on the 24 june 2002 by registered post with ackowledgement of receipt and postage paid, to the address that appears in the "whois" database of Bulkregister (V.I. Green, Postboks, 145, Verdal 7650, Norway) has been sent back, because no one has claimed it."
To this respect, the Bulkregister Registration Agreement, applicable in the instant case, includes the following rule:
"4. Registration Data.
4.1. […]As part of the registration process, you are required to provide us with certain information and to update this information to keep it current, complete and accurate. This information includes […] (ii) the name of an authorized person for contact purposes in the case of a registrant that is an organization, association, or corporation; […] (vi) the full name, postal address, e-mail address, voice telephone number, and fax number if available of the administrative contact for the SLD name; […] You agree and understand that the foregoing registration data will be publicly available and accessible on the Whois directory as required by ICANN/Registry Policy and may be sold in bulk in accordance with the ICANN Agreement.
4.2. Inaccurate or Unreliable Data. Your willful provision of inaccurate or unreliable information, […] then appearing in the Whois directory with respect to an SLD name concerning the accuracy of contact details associated with any registration(s) […], shall constitute a breach of this Agreement. […]"
The Service Agreement is the legal basis between the Registrar and the Respondent; Under such agreement the Respondent was bound to provide to the Registrar "accurate information", including accurate information in respect of the administrative contact.
Failing any submission by Respondent, the Panel is forced to conclude that Respondent used false contact data at the moment of the domain name registration the Respondent and has taken active steps to conceal its true identity, by operating under a name that is not a registered business name. It could be noted that the Respondent has also used for the registration of the domain name <butikk.com>, an alleged company "butikk.com", based at the very same address in Norway, which coincides also with the address of the administrative contact of the Domain Name V.I. Green.
This constitute a further circumstance indicating bad faith as i.a. found in A. H. Belo Corporation v. King TV and 5 Kings, WIPO Case No. D2000-1336, Clerical Medical Investment Group Limited v. Clericalmedical.com (Clerical & Medical Services Agency), WIPO Case No. D2000-1228. As well as in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 the Respondent has provided false address information for the purposes of its domain name registration, which is also in breach of the Respondent’s warranty under paragraph 2(a) of the Uniform Policy.
In light of the foregoing, the Panel decides that the Domain Name registered by the Respondent is identical to the Complainant’s trademark, that the Respondent has no rights or legitimate interests in respect of the Domain name and that the Domain Name has been registered and is being used in bad faith.
Accordingly, the Panel requires that the registration of the Domain Name <adeslas.com> be transferred to the Complainant.
Dated: August 16, 2002