WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
EDIFIL, S. A. v. Martin Aguilar Domínguez
Case No. D2003-0485
1. The Parties
The Complainant is EDIFIL, S.A., of Barcelona, Spain, represented by Oficina Ponti of Spain.
The Respondent is Martín Aguilar Domínguez, of Zaragoza, Spain.
2. The Domain Name and Registrar
The disputed domain name <edifil.com> is registered with BulkRegister.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 23, 2003. On June 24, 2003, the Center transmitted by email to BulkRegister.com a request for registrar verification in connection with the domain name at issue. On June 24, 2003, BulkRegister.com transmitted by email to the Center its verification response confirming that a copy of the Complaint was received on June 24, 2003; that the domain name <edifil.com> is registered with BulkRegister.com; that the Respondent is the registrant of the domain name, providing the contact details for the administrative, billing, and technical contact; that the Policy applies; and that the current status of the domain name is locked. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 3, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was July 23, 2003. The Response was filed with the Center on July 16, 2003.
The Center appointed José Carlos Erdozain as the sole panelist in this matter on July 21, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is the legitimate holder of a Spanish trademark "EDIFIL" No. 541.951 (Class 16), distinguishing inter alia "albums, catalogues, books and publications in relation with philatelic collections and numismatics." This trademark was registered on August 18, 1967. By the documents attached to the Complaint, there is evidence that this trademark is now in force.
The Respondentís activity is related with the sale and advertisement of philatelic collections.
Before initiating this administrative proceeding, both parties sent each other drafts for a transactional agreement in relation with this case. In addition, they also sent each other different documentation and letters.
The Respondent is a stockholder of the Complainant.
The Respondent is authorized to use the trademark "EDIFIL" in the site of the Respondent <filateliaaguilar.com>, but only with publicity purposes.
There has been continuous commercial relationship between the parties.
The Respondent is holder of the Spanish trademark "FILATELIA AGUILAR" No. 899.903 (Class 35), registered on February 2, 1979.
The disputed domain name was registered on April 1, 2000.
The Respondent is the owner of the domain name <edifila.com> and also of the trademark "EDIFILA.COM."
5. Partiesí Contentions
Complainant contends that:
The Complainant is the legitimate holder in Spain of the trademark No. 541.951, "EDIFIL," registered with effects as from August 18, 1967. The trademark covers services for "albums, catalogues, books and publications relative to philatelic collection and numismatics."
The Respondent has not used the domain name in bona fide before any notice from the Complainant of the dispute, being the Respondent aware of the existence of the previous trademark "EDIFIL," since the Respondent is stockholder of the Complainant, having sold Complainantís products through Respondentís own site.
The Respondent has never been known by the disputed domain name in the trade. In Complainantís opinion, the fact that the Respondent is stockholder of the Complainant does not mean that it has any right on the disputed domain name.
The Respondent is making an illegitimate commercial and unfair use of the domain name, since when a user enters the domain name <edifil.com> it immediately addresses to Respondentís site (i.e. <filateliaaguilar.com>).
The Respondent has constantly behaved in bad faith, having registered and used the domain name in bad faith. The Complainant insists that the fact of entering the name <edifil.com> and addressing the user to the Respondentís site implies a use of the domain in bad faith.
The Respondent has never wanted to settle the dispute through an amicable agreement, although the Complainant sent a couple of cease and desist letters to the Respondent. As a matter of fact, the contentions of the Respondent, referred to the cease of use of the disputed domain name and of the domain <edifil.es>, were unacceptable for the Complainant.
The Respondent contends that:
The Respondent is a merchant, stockholder and regular client of the Complainant.
The Respondent is legitimated to sell philatelic and numismatics products from the Complainant, being also entitled to use the trademark "EDIFIL" in the trade.
The domain name <edifil.com> is similar to <edifila.com> and to the trademark EDIFILA.COM, and thus the use of the domain name <edifil.com> by other company could cause confusion, due to its similarity with the domain name <edifila.com> and the trademark EDIFILA.COM, that the Respondent holds.
The Respondent has used the domain name <edifil.com> from the moment of its registration, and has used it to make a legitimate sale of philatelic and numismatics products.
EDIFIL S.A. allows, advises, promotes and even rewards the use of the term EDIFIL by the merchants, as a means of advertising aimed at the attraction of clients to the store, but not forcing them to acquire products from EDIFIL, once they are inside the store. That practice is usual in World and Spanish commerce.
Consequently the Respondent makes a legal and legitimate use of that word, as an advertisement of the products that sells legally, and without the possibility of creating any confusion between the company EDIFIL S.A. and the ownership of the Respondentís virtual store, due to the immediate statement and notice that says that the client is entering Filatelia Aguilarís web page.
The Respondent did not register the domain <edifil.com> with the intention to sell, rent or give away that name getting any economical profit, neither to EDIFIL S.A. nor to any other physical or juridical person, competitor or not competitor of EDIFIL S.A.
The purpose of the registration of the domain <edifil.com> by the Respondent has not been to prevent EDIFIL S.A. from accessing the registration of that one or any other domain name, but to use it legitimally to sell legally philatelic or collectable products, which is something that the Respondent has been doing for many years.
The purpose of the registration of the domain <edifil.com> by the Respondent has not been, fundamentally or partially, to disturb the commercial activity of a competitor, because neither EDIFIL S.A. is a competitor, nor it is possible to disturb a commercial activity that EDIFIL S.A. does not carry out at all, because it does not sell products directly to the public through Internet, and it doesnít even sell products to merchants through Internet.
The Respondent has never tried to create a likelihood of confusion among the Internet users, and itís not possible that that confusion may have been produced unintentionally, because all the necessary measures have been taken to inform the user clearly and emphatically, before he even enters the main page, about the fact that he has accessed Filatelia Aguilarís web page.
6. Discussion and Findings
The Policy sets forth in Paragraph 4(a) the cumulative elements that the Complainant must prove in order to succeed in an administrative proceeding for abusive domain name registration and use. I shall examine each one of these elements in the following items:
A. Identical or Confusingly Similar
Firstly, it must be stressed that the generic TLD ".com" cannot be taken into consideration when comparing the trademark of the Complainant and the disputed domain name. This is due to the uncontested fact that these suffixes do not give any significant difference to the domain name in question.
As a result, according to the requirements established in the Policy, it is necessary to know whether there is a substantial identity between the words of the Complainantís trademarks and the Respondentís domain names.
The case law on trademarks shows that the comparison can be carried out not only from an objective, but also from a subjective point of view. In the first sense, the comparison must take into account the phonetic and graphical analysis, as well as the number of coincidences in the words to be compared. From a subjective point of view, the Panel will look at the words to be compared, which is rather confusing by having used the same relevant distinctive sign.
As a result, it is beyond question that the trademark "EDIFIL," duly registered by the Complainant, is identical to the domain name <edifil.com> if any impartial observer does not take into account the global suffix ".com."
In conclusion, the requirement of Paragraph 4 (a)(i) is met.
B. Absence of Respondent Rights or Legitimate Interest in the domain name <edifil.com>
The domain name at issue does not coincide with the whole or any part of the Respondentís name, trademark, trade name or corporate name.
The Complainantís trademark "EDIFIL" was registered on August 18, 1967, whilst the domain name was registered on April 1, 2000. Therefore, the right of the Complainant is prior to any which the Respondent could be holder of with respect to the words "edifil."
By the contentions of the parties and the facts of the case, it can be deduced that the Respondent is to be considered as authorized to use the trademark "EDIFIL" de facto. This legal status means that the Respondent is in a precario situation, which is characterized by the fact that the holder of the trademark being used can prohibit the use of such trademark with immediate effects, not being subject to any indemnity clause or duty.
It must be stressed that the Spanish Trademark Law 17/2001, of December 7, specifically establishes that the holder of the trademark is entitled to prohibit that any third party may use, without prior consent, the trademark specially as a sign in telematic nets and as domain name (cfr. Art. 34).
Taking into account that the right of the Complainant has been registered more than 20 years before the disputed domain was, it must be concluded that the Respondent has no prevalent right on the same.
In addition, the fact that the Respondent has been using the disputed domain name since 2000, as a so-to-speak de facto user of the trademark "EDIFIL" cannot be taken as a legitimate title to register the domain name <edifil.com>. This registration goes beyond the usual and what is considered fair practice of any person in the trade, since the registration itself can only be undertaken by the holder of the trademark or someone on its behalf. Any registration of a domain name on behalf of the trademark holder must be done on the basis of an express authorization or else on the basis of facta concludentia which shows the unambiguous consent of the trademark holder to the registration of the domain name in question by a third party (see WIPO Case No. D2002-1027). Being the fact that the Complainant refuses, by virtue of the complaint, to have duly authorized the Respondent to use the domain name, it must be concluded that the Respondent has no right or legitimate interest in using such a domain name.
Therefore, the requirement of Paragraph 4(a)(ii) is met.
C. Registered and Used in Bad Faith
As to the bad faith requirement, it should be stressed that the Complainant is holder of the trademark "EDIFIL," which was registered with effects as from August 18, 1967 (see Annex 5 of the Complaint).
The concept of bad faith is based not only on a subjective, but also on an objective basis. In other words, it is not only the knowledge of the Respondent, when registering the disputed domain name, that the latter is identical or similar to a prior trademark, it is also decisive the fact of a continuous use of the domain name under conditions revealing that the Respondentís activity, both registration and current use, cannot be allowed without at the same time causing a damage to a legitimate interest or to a prevalent right of a third party (in this case, the trademark holder).
In this case, it is to be stressed that the Respondent is stockholder of the Complainant. Also, the Respondent has responded and was aware of the activities related with the use of the trademark "EDIFIL." In fact, both parties do work in the same sector of trade. Therefore, it would not be convincing that the Respondent did not know, when registering the domain name, that it was identical to a prior trademark of a third party (significantly, of the Complainant).
Being the fact that the Respondent can be considered only as a de facto user of the trademark "EDIFIL," and only with publicity purposes as it was stated by the Complainant, and in absence of a written agreement which could help with the decision of knowing the specific scope of the use of the trademark by the Respondent, I must conclude that it is unfair to register a domain name, which is identical to a prior trademark of the Complainant, and with the direct or indirect purpose of causing confusion among the consumers about the origin of the activities provided by each of the parties (as shows the fact that by accessing the site of the Respondent, the consumer has the choice to acquire products of the Complainant Ėbut still in the site of the Respondent, or from the Respondent himself; or even by the fact that by introducing the domain name in the browser, it leads to the Respondentís site). To this extent, see WIPO Case Nos.D2000-0514, D2001-0184 and D2000-0587.
Therefore, the domain name <edifil.com> was registered and is being used in bad faith.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <edifil.com> be transferred to the Complainant.
José Carlos Erdozain
Dated: July 28, 2003