The Complainant is Consejo Regulador del Cava, Barcelona, Spain, represented by JAUSAS, Spain.
The Respondent is Adrian Lucas, Zug, Switzerland.
The disputed domain name, <cava.com> (the “Domain Name”), is registered with GoDaddy.com, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2008. On December 19, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed Domain Name. On December 19, 2008, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 December 23, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 12, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on January 13, 2009.
The Center appointed Tony Willoughby as the sole panelist in this matter on January 23, 2009. 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.
The Complainant's name translates into English as The Regulating Council of Cava. It is a trade body attached to the Spanish Ministry of the Environment and Rural and Marine Affairs. It was established in 1993. Its functions include control of production processes for a particular variety of sparkling wine called Cava originating primarily from certain specified municipalities mainly in and around the Catalonian region of Spain.
Over the period from 1986 to 2003, a series of Spanish national and European Economic Community (“EEC”) orders, regulations and laws were passed which define Cava and restrict the use of the designation to products which conform to the definition. The Complainant's functions, which are wide-ranging, also include the protection of the designation Cava.
The Complainant is the registered proprietor of Community Trade Mark No. 3,575,867 (a collective device mark) filed on December 12, 2003 CONSEJO REGULADOR CAVA in classes 33, 35 and 39 for “sparkling wine (cava)” and services relating to the sale and distribution of sparkling wine (cava).
The Complainant is also the proprietor of Community Trade Mark application No. 6,968,036 filed on May 28, 2008 CAVA DE LA TIERRA AL CORAZON (device) in classes 16, 33, 35 and 39 for the same goods and services as the previous registration with in addition a variety of goods covered by class 16.
The Complainant is also the proprietor of the domain name, <crcava.es>, which it registered in 1999.
The Domain Name was registered on November 26, 1996.
The Domain Name is connected to a Sedo directory page featuring sponsored links to a variety of sites ranging from hotel sites to sites offering sparkling wine for sale. Other links lead to sites concerned with other wines and a range of soft drinks.
The Respondent's site also features the legend “BUY THIS DOMAIN The domain cava.com may be for sale by its owner! More details …”. Clicking on the words “More details” takes the visitor to a page inviting one to make an offer for the Domain Name.
The Complainant contends that the Domain Name is identical to “the reserved denomination and geographical indication Cava”.
The Complainant also contends that the Domain Name is “almost identical to the trade marks CONSEJO REGULADOR CAVA and CAVA DE LA TIERRA AL CORAZON and to the Complainant's domain name, <crcava.es>”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name, pointing out that the Respondent has no known connection with Cava or indeed any of the municipalities of Spain in which Cava is produced.
Finally, the Complainant contends that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(i) of the Policy. The Complainant produces evidence to show that the Domain Name is for sale at a price well over the Respondent's out-of-pocket costs in respect of the Domain Name. The Complainant reiterates that the Domain Name is confusingly similar to the marks in which the Complainant has rights and that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Respondent did not reply to the Complainant's contentions.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark 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 Domain Name has been registered and is being used in bad faith.
The Complainant contends that the Domain Name is identical to “the reserved denomination and geographical indication Cava”. The Complainant claims in addition certain trade mark rights, which it says are relevant to the Complaint and claims that the Domain Name is confusingly similar to those trade marks. Finally, on this topic, the Complainant contends that the Domain Name is confusingly similar to the Complainant's domain name, <crcava.es>. The Panel will address each in turn.
The reserved denomination and geographical indication Cava
Cava is a well-known and well-respected variety of sparkling wine made in certain specified municipalities mainly in and around Catalonia under strictly controlled conditions. The Complainant is the body charged with the overall control and protection of the designation. Annexes III to VI to the Complaint are copies of various Spanish national and EEC Laws and Regulations defining the product, regulating its production and providing for protection against unauthorized use of the designation.
The Complainant asserts and the Panel accepts as fact that Cava is protected in Spain and the European Community as a reserved denomination and a geographical indication. As the Complainant correctly points out, if one excludes the generic top level domain suffix (as is normal when assessing identity and confusing similarity for the purpose of paragraph 4(a)(i) of the Policy), the Domain Name is identical to Cava, the reserved denomination and geographical indication.
However, the Policy only talks of trade marks and service marks. Other rights have been specifically excluded from the operation of the Policy.1 The Policy was not designed to protect rights other than trade marks and service marks. In the view of the Panel, there is no room for maneuver in the present case.
In support of its contention that there is room for maneuver and that the Policy is not so rigid, the Complainant cites Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235 for the proposition that “it is settled interpretation that the reference to ‘rights' in Paragraph 4(a)(i) of the Policy includes both registered and unregistered rights”. However, that case merely confirmed that the Policy was not restricted to the protection of registered trade marks, but extended also to unregistered or common law trade marks. That decision does not seek to take the scope of the Policy beyond the realm of trade mark rights.
Therefore, the Complainant is not able to rely in these proceedings on the reserved denomination and geographical indication “Cava” (per se) as a trademark or service mark in which the Complainant has rights for the purposes of Paragraph 4(a)(i) of the Policy.
Registered Trade Marks
The Complainant is the registered proprietor of
(i) Community Trade Mark No. 3,575,867 (a collective device mark) filed on December 12, 2003 CONSEJO REGULADOR CAVA in classes 33, 35 and 39 for “sparkling wine (cava)” and services relating to the sale and distribution of sparkling wine (cava).
(ii) Community Trade Mark application No. 6,968,036 filed on May 28, 2008 CAVA DE LA TIERRA AL CORAZON (device) in classes 16, 33, 35 and 39 for the same goods and services as the previous registration with, in addition, a variety of goods covered by class 16.
Dealing first with the second of those two marks, the Panel notes that it is a complex device mark featuring four gold-coloured bottles on a black background. The word “CAVA” (in stylized form) appears with one letter of the word depicted on each of the four bottles. To the Panel's eye, the word is not the most prominent feature of the mark. The Panel is unable to conclude that the Domain Name is confusingly similar to this mark.
The Panel also observes that this mark is the subject of an application, which has not yet achieved registration, and cannot of itself therefore constitute a trade mark within the meaning of Paragraph 4(a)(i) of the Policy.
The first of those marks, however, is a registered mark and, although a device mark, has as its most prominent feature the word “CAVA” in upper case. In the result, it is not difficult to conclude that the Domain Name is confusingly similar to it and the Panel so finds.2
For the purposes of this decision, the Panel finds that the Domain Name is confusingly similar to Community Trade Mark No. 3,575,867 in which the Complainant has rights.
The domain name, <crcava.es>
The Complainant's website is to be found connected to its domain name, <crcava.es>, a domain name it registered in 1999. The Complainant contends that the Domain Name is confusingly similar to this domain name in respect of which it claims rights.
The Panel has been provided with insufficient information to enable it to decide whether the Complainant's domain name is an unregistered trade mark in which the Complainant has rights. For example, the Panel does not know when the Complainant first started making active use of that domain name, nor does the Panel know the extent to which (if at all) the Complainant has promoted that domain name such as to give it the status of a trade mark or service mark.
Accordingly, the Panel finds that insofar as the record in this administrative proceeding is concerned the Complainant is unable to rely on its domain name <crcava.es> as a trademark or service mark in which the Complainant has rights for the purposes of Paragraph 4(a)(i) of the Policy.
In light of the evidence put forward by the Complainant, it seems probable to the Panel that the Respondent has no connection with “Cava” such as to give him any right or legitimate interest in respect of “Cava”. However, it is unnecessary to address this issue given the Panel's finding under Section D below.
It also seems probable to the Panel, on the basis of the evidence submitted by the Complainant, that the Respondent is using the Domain Name in order to derive commercial gain by way of pay-per-click revenue from the Sedo parking page to which the Domain Name is connected.
Under Section B above the Panel has found that the Domain Name is confusingly similar to CTM registration No. 3,575,867 in which the Complainant has rights.
However the Complainant must establish bad faith registration. Its ability to do so in this case is hampered considerably by a number of factors.
First, the Complaint was launched more than a decade after the Domain Name was registered. While a delay of this length need not be fatal to a complaint under the Policy, it is nonetheless likely to give rise to evidentiary difficulties.3
Secondly, the Domain Name (absent the top level domain suffix) is not a trade mark or service mark, but a generic term for a genus of wine.
Thirdly, there is no direct evidence of intent on the part of the Respondent to target the Complainant at the time of registration.
Fourthly, the trademark registration upon which the Complainant relies, namely the CONSEJO REGULADOR CAVA device mark, was applied for on December 12, 2003, whereas the Domain Name was registered on November 26, 1996. Therefore, at the date of registration of the Domain Name the Complainant did not own any trade mark rights in respect of the word “cava” per se, or if it did, the Panel has been provided with no evidence of any such rights.
The issue is therefore whether in the absence of such trademark rights, and weighing all of the circumstances, the Respondent can be said to have registered the Domain Name in bad faith.
The Panel refers to the question and answer to be found at paragraph 3.1 of the “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, which is to be found as a resource on the Center's website:
“Can bad faith be found if the disputed domain name was registered before the trademark was registered/common law trademark rights were acquired?
Consensus view: Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant's non-existent right.
Relevant decisions: John Ode dba ODE and ODE - Optimum Digital Enterprises v. Intership Limited WIPO Case No. D2001-0074, Denied Digital Vision, Ltd. v. Advanced Chemill Systems WIPO Case No. D2001-0827, Denied PrintForBusiness B.V v. LBS Horticulture WIPO Case No. D2001-1182, Denied.
However: In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. This often occurs after a merger between two companies, before the new trademark rights can arise, or when the respondent is aware of the complainant's potential rights, and registers the domain name to take advantage of any rights that may arise from the complainant's enterprises.
Relevant decisions: ExecuJet Holdings Ltd. v. Air Alpha America, Inc. WIPO Case No. D2002-0669, Denied Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc) WIPO Case No. D2003-0320, Transfer Madrid 2012, S.A. v. Scott Martin-MadridMan Websites WIPO Case No. D2003-0598 among others, Transfer General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Center Online WIPO Case No. D2003-0845, Transfer.
While the Complainant was certainly in existence when the Domain Name was registered (the Complainant was established in 1993), the Panel does not believe that the Respondent could be expected to have anticipated at that time that the Complainant would be able to obtain trade mark rights in respect of the word “cava”. The Panel also regards it as unlikely on the present record that when the Respondent registered the Domain Name over 12 years ago, he had in mind the Complainant and/or any future trade mark rights of the Complainant.
The Panel is therefore not persuaded that the Respondent registered the Domain Name in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, the Complaint is denied.
Dated: January 28, 2009
1 See. e.g. Paragraphs 167 and 168 of the Final Report of the First WIPO Domain Name Process (April 30, 1999), and paragraphs 244 and 245 of the Final Report of the Second WIPO Domain Name Process (September 3, 2001).
2 One oddity that has caused the Panel a certain amount of concern is the following. On the one hand, “cava”, as an arguably generic term for a genus of wine, is in many jurisdictions likely to be unregistrable for the principal category of goods for which the Complainant's collective mark is registered, namely “sparkling wine (cava)”. On the other hand, by way of this collective device mark, the most prominent element of which is “cava”, the Complainant is effectively claiming trade mark protection for the word. There is a potential issue therefore as to whether the Complainant should be permitted to claim such trade mark protection by the back door for the purposes of Paragraph 4(a)(i) of the Policy. However, it is not necessary for the Panel to decide this issue in light of the Panel's finding under Section D below.
3 See e.g. Paragraphs 6.12. and 6.13. of Francine Drescher v. Stephen Gregory, WIPO Case No. D2008-1825.