WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

San Miguel, Fábricas De Cerveza Y Malta, S.A. v. Joohee Lee

Case No. D2004-0377

 

1. The Parties

The Complainant is San Miguel, Fábricas De Cerveza Y Malta, S.A., Madrid, of Spain, represented by Mr. Enrique Saez Herrero, Madrid, Spain.

The Respondent is Joohee Lee, Banpodong Seochogu, Seoul, of Republic of Korea.

 

2. The Domain Name and Registrar

The disputed domain name <sanmiguel.com> (the “Domain Name”) is registered with eNom, Inc., Bellevue, WA, USA (eNom).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2004. On May 24, 2004, the Center transmitted by email to eNom a request for registrar verification in connection with the Domain Name at issue. On May 24, 2004, eNom transmitted by email to the Center its verification response and referred to its “WHOIS” for information about the registrant of the Domain Name. The Center made a printout of eNom’s “WHOIS” on May 25, 2004, and furthermore, this Panel confirmed through the information reflected on the registrar’s “WHOIS” website, which provides information only of the domain names that are registered by eNom, Inc., that the Respondent is listed as the registrant; that such domain name is in “registrar-lock” status; and confirmed the details for the administrative and technical contacts at which communications under this domain name dispute have been sent to. 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), on June 2, 2004, the Center sent the Notification of Complaint to the Respondent by courier, fax and e-mail. This way the Center was discharged of its responsibility under Rules, paragraphs 2(a) and 4(a), and the proceedings commenced on June 2, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was June 22, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 23, 2004.

The Center appointed Assen Alexiev as the sole panelist in this matter on June 29, 2004. In accordance with Rules, paragraph 15, the projected decision date was July 13, 2004.

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.

In accordance with Rules, paragraph 11(a), the language of this administrative proceeding is English, being the language of the Domain Name Registration Agreement.

 

4. Factual Background

Complainant SAN MIGUEL, FÁBRICAS DE CERVEZA Y MALTA, S.A. is a renowned Spanish brewery. It is the holder of a number of trademarks that include the words SAN MIGUEL and figurative elements, registered for, inter alia, goods in Class 32, including beers, as follows:

- Spanish Trademark No. 356.668 SAN MIGUEL (Device), applied for on November 24, 1959, and granted on March 22, 1960;

- Spanish Trademark No. 724.381 SAN MIGUEL (Device), applied for on August 14, 1973, and granted on April 18, 1977;

- Spanish Trademark No. 1.686.874 SAN MIGUEL (Device), applied for on February 12, 1992, and granted on October 5, 1992;

- Spanish Trademark No. 1.907.674 SAN MIGUEL (Device), applied for on June 9, 1994, and granted on January 20, 1995;

- Spanish Trademark No. 2.025.260 SAN MIGUEL (Device), applied for on March 30, 1996, and granted on October 21, 1996;

- International Trademark No. 234.159 SAN MIGUEL (Device), for the following countries: Benelux, Germany, Egypt, France, Hungary, Italy, Liechtenstein, Morocco, Monaco, Romania, San Marino, Vietnam, Yugoslavia;

- International Trademark No. 383.702 SAN MIGUEL (Device), for the following countries: Germany, Austria, Benelux, Egypt, France, Hungary, Italy, Liechtenstein, Morocco, Monaco, Portugal, Romania, San Marino, Switzerland, Czech Republic, Yugoslavia;

- International Trademark No. 601.383 SAN MIGUEL (Device), for the following countries: Algeria, Germany, Austria, Benelux, Bulgaria, Cuba, Egypt, France, Hungary, Italy, Liechtenstein, Morocco, Monaco, Poland, Czech Republic, Romania, San Marino, Slovak Republic, Switzerland.

The Respondent registered the Domain Name with eNom on May 23, 2002.

 

5. Parties’ Contentions

A. Complainant

The Domain Name is identical to trademarks in which the Complainant has rights.

The trademark registrations held by the complainant in Spain and a variety of other countries, consist of its own name, SAN MIGUEL. The Domain Name registered by the Respondent consists of that very same name, SANMIGUEL, with the addition of the Top Level Domain “.com”.

The existence of this domain name <sanmiguel.com> registered in favour of a person which has no relation with the complainant company SAN MIGUEL, FÁBRICAS DE CERVEZA Y MALTA, S.A. will undoubtedly create numerous situations involving confusion with the industrial property registrations the complainant has legitimately made in many countries, since both the Domain Name registered by the Respondent and the Complainant’s industrial property registrations are of a totally and absolutely identical name.

In San Miguel, Fábricas de Cerveza y Malta, S.A. v. D. Salvador Preckler Arias, WIPO Case No. D2002-1107, regarding the domain name <sanmiguel.info>, the WIPO Arbitration and Mediation Center issued a Decision in which it expressly recognised the notoriety of “SAN MIGUEL” trademarks on the market.

In MAHOU, S.A. y SAN MIGUEL, FÁBRICAS DE CERVEZA Y MALTA, S.A. v. Andrés Cernadas Ramos, WIPO Case No. D2002-1074, regarding the domain name <mahousanmiguel.com>, express acknowledgement was given to the noteworthy public knowledge of the marks “SAN MIGUEL” and “MAHOU” to distinguish beers.

The Complainant’s SAN MIGUEL mark is renowned or notorious and so benefits from more scrupulous protection, so that registration of the <sanmiguel.com> domain name by someone other than the legitimate owner of the SAN MIGUEL mark is absolutely unacceptable.

The Respondent has no rights or legitimate interests in respect of the Domain Name.

The Respondent has no relation with the Complainant brewery and is not associated by the consuming public with the SAN MIGUEL mark, which has been present on the world market for many years. The Respondent’s only link with the SAN MIGUEL mark is its registration of the domain name <sanmiguel.com> in an attempt to exploit or to try to prejudice the Spanish company SAN MIGUEL, FÁBRICAS DE CERVEZA Y MALTA, S.A.

The Domain Name was registered and is being used in bad faith.

The Respondent’s registration of the domain name <sanmiguel.com> is an act of bad faith since the Complainant is a well-known Spanish brewery has made a very considerable investment in advertising over the years in order to make its beers known and which markets its products not only in Spain, but also in many other countries abroad. The SAN MIGUEL mark is therefore a renowned name and the Respondent’s intention of registering the domain name <sanmiguel.com> is absolutely illicit since, because of its renown, ignorance of the SAN MIGUEL mark cannot be asserted.

The Complainant’s trademark “SAN MIGUEL” dates back to 1959. Ever since then, the Complainant has been registering and promoting his trademark “SAN MIGUEL” in Spain and abroad and has thereby succeeded in achieving well-earned prestige on the market.

Further evidence of this bad faith is the fact that the holder of the disputed domain –the Respondent- carries out no business of any kind at this domain, as may be confirmed by visiting the site on the Internet under the name of “www.sanmiguel.com”, in which it appears the message “NO SE PUEDE ENCONTRAR”, i.e. “it cannot be found”, referring to “www.sanmiguel.com”, which is evidence of non-use and inactivity of the disputed domain <sanmiguel.com>. This domain inactivity is an obvious indication of the Respondent’s wish to occupy the space on the web that legitimately belongs to the Complainant. The WIPO’s Mediation and Arbitration Center has declared many times that website inactivity carries the presumption of a wilful act of bad faith, in this case in the form of preventing the Complainant from registering the domain coinciding with the SAN MIGUEL mark which belongs to it. (Decisions include Christian Dior Couture SA v Liage International Inc. WIPO Case No. D2000-0098, Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing & Logistics Corp. WIPO Case No. D2000-0464, J. García Carrión, S.A. v. Mª José Catalán Frías WIPO Case No. D2000-0239, and MAHOU, S.A. y SAN MIGUEL, FÁBRICAS DE CERVEZA Y MALTA, S.A. v. Andrés Cernadas Ramos, WIPO Case No. D2002-1074).

It is also well-established doctrine of the WIPO Mediation and Arbitration Center that the mere acquisition of a domain name is not a circumstance which, alone, accredits the registrant’s legitimate interest (as the Panel has declared in, among others, Telstra Corporation Limited v. Nuclear Marshmallows WIPO Case No. D2000-0003, City of Hamina v. Paragon International Projects Ltd. WIPO Case No. D2001-0001, Caja de Ahorros de Valencia, Castellón y Alicante Bancaja v. José Delgado Hueso WIPO Case No. D2001-1491 and MAHOU, S.A. y SAN MIGUEL, FÁBRICAS DE CERVEZA Y MALTA, S.A. v. Andrés Cernadas Ramos, WIPO Case No. D2002-1074). Furthermore, in line with the Panel’s findings in several decisions, the notoriety of prior distinctive marks establishes, for the demonstration of the good faith of the holder of the disputed domain, insofar as its registration and use, a consequent reversal of the burden of proof, specifically to the detriment of the domain holder, which is the party in the best position to demonstrate the requisite good faith and, therefore, its legitimacy, whereas this burden would be too onerous to the holder of a prior and preferential right or interest.

In this case, the purpose of the registration was none other than to make undue use of the effort of another, demonstrated in the repute of the SAN MIGUEL marks, and to prevent its owner from reflecting them in an identical domain name.

B. Respondent

The Respondent failed to submit a Response.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that, to justify transfer of a domain name, a 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 service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Respondent has registered and has been using the Domain Name in bad faith.

In this case, the Center has employed all measures to achieve actual notice of the Complaint to the Respondent, in compliance with Rules, paragraph 2(a). The Notification of Complaint was sent to the addresses provided by the Respondent to eNom, by courier, by fax and by e-mail. As seen from the postal shipment tracking results, the postal address, provided by the Respondent, is incorrect. The fax number provided by the Respondent is unreachable, and no fax transmission can be made to it, as seen from the printout by the Center’s fax machine. The Notification of Complaint was delivered by e-mail to the address provided by the Respondent.

Therefore, the Respondent was given a fair opportunity to present its case.

By Rules, paragraph 5(b)(i), it is expected of a Respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”

In the event of a default, under Rules, paragraph (14)(b): “…the Panel shall draw such inferences therefrom as it considers appropriate.”

As stated by the Panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004: “ Here, the potential evidence of good faith registration and use was in respondent’s control. Respondent’s failure to present any such evidence or to deny complainant’s allegations allows an inference that the evidence would not have been favorable to respondent.” As stated by the Panel in Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443: “Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant. … In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence.”

In this administrative proceeding, the Respondent’s default entitles the Panel to conclude that Respondent has no arguments or evidence to rebut the assertions of the Complainant. The Panel has to take his decision on the basis of the statements and documents submitted by the Complainant and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

I. Identical or Confusingly Similar

The Complainant has established that it has rights in the trademarks SAN MIGUEL. Complainant owns a number of trademarks, the first of which pre-dates Respondent’s registration of its domain name by more than 40 years. Further, the Complainant has established that for a long period of time Complainant has been registering and promoting his trademarks “SAN MIGUEL” in Spain and abroad and has thereby succeeded in achieving well-earned prestige on the market.

Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a presumption that the mark is inherently distinctive. Respondent has the burden of refuting this presumption. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.

A device mark per definition is a design, such as a stylised version of word, or an object. Since a domain name can not include a design element, any Internet user has to find a website by searching for the name they know, rather than for the design element. The word element SAN MIGUEL of the Complainant’s device marks is without any doubt their predominating and most substantial element. The products of the Complainant are known by the words “SAN MIGUEL” - that is the term, which would be used by consumers in referring to the Complainant and its products. Any Internet user would suppose that a website pertaining to the trademark would contain the words “SAN MIGUEL”. This Panel shares the view that in comparing a domain name with a trademark that contains a prominent word component, it is appropriate to compare the domain name with this word component of the mark. In the present case, the two are identical, and the other aspects of the device marks are not sufficiently distinctive to prevent consumer confusion arising from the identity between the word element “sanmiguel” in the Domain Name and the word element “SAN MIGUEL” in the device marks.

Therefore, the Panel is convinced that the Complainant has established the first element of the test.

II. Rights or Legitimate Interests

Complainant contends that ever since 1959, the Complainant has been registering and promoting his trademark “SAN MIGUEL” in Spain and abroad. Its SAN MIGUEL beer products have been present on the market for many years and have thereby succeeded in achieving a well-earned prestige.

Complainant also contends that the Respondent has no relation with the Complainant brewery and is not associated by the consuming public with the SAN MIGUEL mark. The Respondent’s only link with the SAN MIGUEL mark is its registration of the domain name <sanmiguel.com>, the mere acquisition of which is not a circumstance, which, alone, accredits the registrant’s legitimate interest.

This way, the Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name.

Once Complainant makes out a prima facie case under Policy, Paragraph 4(a)(ii), the burden shifts to the Respondent to rebut the showing by providing evidence that it has rights to or legitimate interests in the Domain Name. 

The Respondent, by its default, has chosen not to present the Panel with any allegations or documents in its defence despite its burden under Rules, paragraph 5(b)(i) and 5(b)(ix) or the consequences that a Panel may extract from the fact of a default (Rules, paragraph 14). If Respondent had any justification for the registering or using the disputed domain name, it could have provided it. In particular, Respondent has failed to contend that any of the circumstances described in Policy, Paragraph 4(c) - or any other circumstance - is present in its favour.

In fact the only statement of the Respondent is his acceptance of the Registration Agreement with eNom, and the provision of his contact details. As is evident from the record of this administrative proceeding, the postal address of the Respondent was incorrect and his fax number was non-operational. A person who has rights and legitimate interests in a Domain Name would not prevent himself from getting informed about any developments with his domain name registration by providing false contact information. If the Respondent had bona fide reasons to keep the secrecy of his identity and contact details, he also had the opportunity to explain it to the Panel. While insufficient in itself to prove lack of rights and legitimate interests in the Domain Name, the Respondent’s conduct allows the Panel to draw reasonable inferences of fact from Complainant’s allegations and deem them to be true.

This way, the Panel is satisfied with the prima facie case established by the Complainant, and finds that the Respondent has no rights and legitimate interests in the Domain Name.

III. Registered and Used in Bad Faith

For a Complainant to succeed, the Panel must be satisfied that a Domain Name has been registered and is being used in bad faith. Even if the Respondent has not responded to the Complaint, the Complainant has to prove under the Policy that the Respondent has registered and is using the Domain Name in bad faith.

The Respondent has not attempted to sell the Domain Name to the Complainant and does not actively use it. The question is, therefore, whether the passive holding of the Domain Name can be considered to be registration and use in bad faith, taking into account all circumstances of the present case.

The four criteria set forth in the Policy, paragraph 4(b) are non-exclusive. In addition to these criteria, other factors alone or in combination can support a finding of bad faith.

It is clear from the record of this administrative proceeding that the Respondent has provided incorrect postal address and fax number and has given no explanation of this incorrectness. Providing false contact information violates paragraph 2 of the Policy, which requires a registrant to represent that the statements it “made in [its] Registration Agreement are complete and accurate.” Previous arbitration decisions have found that providing and maintaining false identification information is evidence of bad faith registration and use. Action Instruments, Inc. v. Technology Associates, WIPO Case No. D2003-0024: “Maintaining that false contact information in the WHOIS records (which can easily be updated at any time) after registration constitutes bad faith use of the domain name because it prevents a putative complainant from identifying the registrant and investigating the legitimacy of the registration. For example, permitting registrants to mask their identity makes it difficult for trademark owners to determine whether the registrant “registered the domain name primarily for the purpose of disrupting the business of a competitor,” (Policy, paragraph 4(b)(iii)), or whether the registrant “engaged in a pattern” of registering domain names “in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name,” (Policy paragraph 4(b)(ii)).” See also Carfax, Inc. d/b/a Carfax v. Auto Check USA, WIPO Case No. D2001-0929.

The Respondent has failed to make a bona fide use of the domain name at issue for two years since its registration. It has been held that failure to make a bona fide use of a domain name during a two-year period following registration can constitute bad faith. Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004. The registrant should be given sufficient time to make preparations to use the registered domain name, but the “parking” of a domain name is evidence of bad faith registration and use. While inconclusive, it is possible to infer from this failure of use that the domain name was registered without a bona fide intent to make good faith use and with the intent to prevent the Complainant from registering the domain coinciding with the SAN MIGUEL mark.

The Respondent has registered a Domain Name that is confusingly similar or even identical to the well-known trademarks SAN MIGUEL of the Complainant, and has no rights or legitimate interests in the Domain Name.

The Panel is convinced that, taken together, the above listed circumstances constitute bad faith registration and use under Paragraph 4(a)(iii) of the Policy.

 

7. Decision

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 <sanmiguel.com>, be transferred to the Complainant.

 


 

Assen Alexiev
Sole Panelist

Dated: July 9, 2004