WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cortefiel, S.A. v. The Gallery Group
Case No. D2000-0162
1. The Parties
The Complainant is Cortefiel, S.A., a corporation with legal head office in Avenida del Llano Castellano 51, Madrid E-28034, Spain (the "Complainant"), represented by Verónica Palau Hunziker and Amadeu Abril i Abril, on behalf and in the name of Nominalia Internet SL, Barcelona, Spain.
The Respondent is The Gallery Group, an entity doing business in C.C. Urb. Monteprincipe, 15 A, Boadilla del Monte, 28668 Madrid, Spain (the "Respondent").
2. The Domain Name and Registrar
The domain name at issue is pedrodelhierro.com, registered with Network Solutions, Inc., a Delaware corporation with head office at 505 Huntmar Park Drive, Herndon, Virginia 20170, United States of America (the "Registrar").
3. Procedural History
On March 15, 2000 a Complaint in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules") was submitted by e-mail to the WIPO Arbitration and Mediation Center (the "Center"). On March 16, 2000 the Complaint was received by the Center in hard copy.
On March 23, 2000, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding by post/courier (with enclosures), by facsimile (Notification and Complaint to the Respondent with attachments) and by E-mail (Notification and Complaint without attachments). The Center established April 12, 2000, as a deadline for the submission of a Response.
The Notification of Complaint included following paragraph:
"6. Default. If your Response is not sent by the above date or we have not received any required payment from you by that date, you will be considered in default. We will still appoint an Administrative Panel to review the facts of the dispute and to decide the case. The Administrative Panel will not be required to consider a late-filed Response, but will have the discretion to decide whether to do so and, as provided for by Rules, Paragraph 14, may draw such inferences from your default as it considers appropriate. There are other consequences of a default, including no obligation on our part to consider any designations you have made concerning the appointment of the Administrative Panel or to observe any guidelines you have provided concerning case-related communications."
On March 23, the technical and zone contact in the domain name registration, Mr. Oscar Ruiz from Recycle Internet, with E-Mail address email@example.com, sent an email in Spanish  to Domain.Disputes (the WIPO Center) with E-mail address firstname.lastname@example.org.
On March 24, 2000, the Case Manager acknowledged receipt of Mr. Ruiz´ email with following text:
"Thank you for your message, which I reviewed with a colleague (who speaks Spanish). I understand that you are offering an explanation about the status of the domain name and how it should be considered. Under the administrative procedure, a complaint and case have been commenced against the party who is indicated as the registrant of record for the domain name: pedrodelhierro.com. That case will proceed, and the deadline for filing a Response, as indicated in the Notification of Complaint and Commencement of Administrative Proceeding, is April 12, 2000. I attach an extra copy of the Notification. After the deadline for the Response passes, whether or not a Response is filed, the procedures provide that a neutral and independent panelist will be appointed to decide the matter. Thus, the case will go forward, and those involved with the registration of the domain name should file a Response should they wish to have their views considered. In accordance with the Rules for the procedure, all further communications to the Center should be copied to the Complainant in this case. (Rule 2(h))."
On March 24, 2000, the Registrar confirmed to the WIPO Center that the domain name at issue was registered through Network Solutions, Inc., that The Gallery Group is the current registrant, and that the domain name is active.
On April 14, 2000, the Center sent a Notification of Respondent Default to the Parties by e-mail.
After having received Roberto A. Bianchi´s Statement of Acceptance and Declaration of Impartiality and Independence, the Center appointed him as a sole panelist. The decision date was scheduled for May 3, 2000. Thus, the Administrative Panel finds that it has been properly constituted.
The Panel sharing the assessment of the Center, independently finds that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules, and that payment of the fees was properly made. The Panel finds that the Center has discharged its responsibilities at trying to notify the Complaint and, subsequently, the Notification of Respondent Default to the Respondent pursuant to Rules, paragraph 2(a).
There were no extensions granted nor orders issued.
On April 17, 2000, Mr. Alexander Martin, from Recycle Internet with E-Mail email@example.com, sent following email to Domain.Disputes:
"I am a colleague of Mr. Oscar Ruiz and will be handling this matter for
Mr. Ruiz had sent you an email (on March 23) in which he stated a
submission of The Gallery Groups’ Responses, offering an explanation
about the status of the domain name and how it should be considered.
Submission of The Gallery Groups’ Response has been made. You answered
that Response on March 24. (please see below) Therefore, we do not understand the attached document. Please review this matter and get back to me".
On April 18, 2000, the Case Manager replied to Mr. Martin´s email with following text:
"Thank you for your communication of April 17. Let me confirm that it will be forwarded to the panelist appointed to decide this case, along with all of the prior communications and papers submitted by the parties in this case, including those to which you have referred (i.e. the e-mail exchange of March 23 and 24, 2000). As I had indicated in my message of March 24, 2000, and as was explained in the attached Notification of Complaint a respondent is entitled to file a Response. Such a Response should be filed in accordance with the Rules and the Supplemental Rules, which were explained in the Notification. Following my message of March 24, 2000, the Center did not receive a Response complying with these rules, nor any indication that the e-mail of Mr. Ruiz should be considered as a Response. However, as noted above, Mr. Ruiz´ message, as well as your e-mail and all other documents for this case, will be forwarded to the panelist appointed to consider and decide this matter".
The registration agreement for the domain name at issue has been done and executed in English by Respondent-Registrant The Gallery Group and the Registrar. The Complainant has submitted its Complaint in English without any observation. Seeing the Panel no special circumstances to determine otherwise, as provided in Rules, Paragraph 11, the language of this proceeding is English.
4. Factual Background
After Complainant´s assertions, supported by the documents enclosed with the Complaint and undisputed by Respondent – because of its default - the Panel finds that the Complainant owns the following "Pedro del Hierro" trademarks registrations in Spain, with registration date 11/30/1998:
Numbers 2.199.515/516/517/518/519//520/521 in, respectively, classes Class 03 (whitening preparations and other washing substances; washing, polish, degrease and scrape preparations; soaps; perfumes; essential oils; cosmetics; hair lotions and tooth pastes); Class 9 (Scientific, nautical, geodesic, electric, photographic, cinematographic, optic, weight, measure and signing control (inspection) instruments; help and teach instruments; register, transmission, sound reproduction or image reproduction instruments; magnetic register supports; acoustic disks; slot machines; mechanisms for pre-pay instruments; information boxes and computers; extinguishers; glasses); Class 14 (Precious metals and its alloys, and this material articles or veneered articles not included in other classes; jewelry, imitation jewelry, precious stones; watches and chronometrical instruments); Class 18 (Leather and leather imitations; this material products not included in other classes; animal skins, trunks and suitcases; umbrellas, sunshade and sticks; brush woods and harness shop); Class 25 (Articles of Clothing for women, men and children. Shoes (not orthopedics) and hatters); Class 35 (Advertising services, commercial business administration; commercial administration services, office works services; commercial sales services; organization of commercial or advertising expositions); Class 42 (Restoration services; temporary host services; medical care, hygiene and beauty services; veterinary and agriculture services; juridical services; scientific and industry investigation services; computers programming services; graphic art designer services; fashion designer services; fashion information; inside decoration design; industry drawing).
The Complainant has applied on 07/23/999 for registration of the mark "Pedro del Hierro" (graphic mark) as a Community Mark in classes 3, 9, 14, 18, 25, 35 and 42.
After Complainant´s assertions – uncontested by Respondent because of its default, and not denied in Mr. Ruiz´ email – the Panel considers established that such marks are famous or well-known for clothing and fashion products and shops in Spain.
For similar reasons and the confirmation sent by the Registrar to the WIPO Center, it has been demonstrated that the domain name pedrodelhierro.com has been registered by the Respondent with Network Solutions, Inc.
5. Parties’ Contentions
The Complainant asserts that
The Panel, sharing the assessment of the Center, finds that the Respondent has not submitted a Response, and is therefore formally in default pursuant to Rules, Paragraph 14(a). However two emails were sent in the name of the Respondent to the WIPO Center. The first one on April 23, 2000, and the second one, on April 17, 2000. Both were answered by the Center´s Case Manager Mr. Christopher Gibson. Their texts can be read at 3 above.
6. Discussion and Findings
6.1 Email submissions
Before addressing the merits, the Panel has to decide whether to consider Mr. Martin´s email of April 17, 2000, a Respondent´s submission, and what weight to accord it. Under the Rules, Paragraph (a)(d), this determination is solely within the discretion of the Panel. See also WIPO Notification of Complaint and Commencement of Administrative Proceeding, Paragraph 6, 3 above. WIPO Case D2000-0009 Talk City, Inc. v. Michael Robertson, 5 (a) .
Because of its late submission and content, Mr. Martin´s email will not be considered. The email was sent on April 17, 2000, that is five days after the deadline established for submission of a Response. Particularly the statement that Mr. Martin or Mr. Ruiz "do not understand the attached document", referring to the Center´s communication, cannot be afforded any weight.As to the email of March 23, 2000, by Mr. Ruiz, which was received by the Center before the deadline for submitting a Response, the Panel considers that it lacks the minimum formal elements to be considered as a formal Response pursuant to Rules, Paragraph 5(b)(i) that states:"(t)he response shall (...) (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 (...)". Nevertheless Mr. Ruiz email does contain some statements and assertions that, while not allowing the Panel to consider it a formal Response, certainly merit attention "in fairness and to avoid any prejudice". See Talk City, 5(a)(i).
Mr. Ruiz on behalf of the Respondent stated that
Under Rules, Paragraph 10(a) the Panel has powers to independently visit the Internet in order to obtain additional light in this default proceeding.On April 30, 2000, the Panel visited the www.pedrodelhierro.com web site of the Respondent using two different browsers. No servers could be reached.
6.4. Identity or Confusing Similarity
The Panel has considered the allegations by the Complainant as to the identity of the domain name at issue to the Complainant´s trademark PEDRO DEL HIERRO. These allegations have not been contested by the Respondent because of its default.
The Panel has compared the domain name at issue with the Complainant´s trademarks PEDRO DEL HIERRO, and finds that the second level domain name pedrodelhierro is identical to the Complainant marks. The missing spaces between "pedro" and "del", and "del" and "hierro" are not a material difference, as spaces technically cannot be reflected in a domain name registration. The addition of ".com" – a generic top level domain intended for commercial organizations - makes the domain name confusingly similar to such trademarks.
The Panel´s finding is further supported by Mr. Ruiz´ email, that states that its company understands that Complainant wishes to use its marks as a domain name. Such understanding would not have been expressed, had the domain name at issue not been identical or confusingly similar to the marks of the Complainant.
6.5. Rights and Legitimate Interests in the Domain NameThe Panel has considered the allegation by the Complainant as to the lack of rights or legitimate interests of the Respondent in respect of the domain name at issue. In particular, the Panel has considered the Complainant´s contention about the lack of any legitimate intellectual property right of the Respondent to the domain name. These allegations have not been contested by the Respondent because of its formal default. Nevertheless, Mr. Ruiz´ email states that the Respondent´s registration was made "following instructions from his client Mr. Pedro Hierro as reflected in the company´s invoice issued on the day of the application". The Respondent neither has supported this assertion with evidence of any instruction by said "Mr. Hierro", nor has submitted any proof of Mr. Hierro´s existence, nor has presented any such invoice or document whatsoever in support of its contentions. Nor has Respondent presented the Panel with any evidence of "Mr. Pedro Hierro´s" alleged aviation activities. Mr. Ruiz also states that "the name of the company´s client is Pedro Hierro and the domain name is pedrodelhierro.com." The Panel notes that, while "Pedro Hierro" can certainly be a common Spanish person name, and Spanish male persons with such name most likely do exist, the Panel cannot overlook the fact that the domain name at issue is "pedrodelhierro.com", and not "pedrohierro.com" (that is, without the Spanish word "del"). Had such "Mr. Pedro Hierro" really wished to reflect his own individual name in a domain name, he should have done it without any artificial addition. Instead, the addition of the word "del" in the domain name registration suggests slavishly copying to reflect – without any right thereto – the famed or well-known Complainant´s marks in a corresponding domain name.
The Panel notes further that the Respondent in this proceeding is The Gallery Group, and not "Mr. Pedro Hierro ". Pursuant to Rules, Paragraph 1 ("Definitions") "(p)arty means a Complainant or a Respondent". The Panel´s decision can only affect Parties. It is the Respondent who has registered the domain name and no other entity or person, and it is Mr. Ruiz on behalf of the Respondent who has submitted the email of March 23, 2000. See WIPO Case D2000-0025 Société Générale de Surveillance S.A. v. Inspectorate, 6.3.1.
In absence of any evidence that such "Mr. Pedro Hierro" really exists, and that he is the real owner of the domain name, the Panel considers that the Respondent The Gallery Group is who has to prove its own rights or legitimate interests in the domain name at issue. It fails to do so.
The fact that PEDRO DEL HIERRO is a famous or well-known mark in Spain is also uncontested. In fact, Mr. Ruiz in his email even recognizes that the wish of the Complainant to use such marks as a domain name is "understandable".
There is no contention in the record in favor of the Respondent, and particularly that The Gallery Group might have rights to or legitimate interests in the domain name. No circumstance has been evidenced that could reasonably support such an inference pursuant to the Policy, paragraph 4(c). To the contrary, the Panel notes that on January 19, 2000, Ms. Susana Madruga of Recycle Internet on behalf of the Respondent in an email to the Complainant´s trademark attorney stated that Recycle Internet "is offering different services on the Internet, and among them, the registration of domain names on behalf of third parties". (Emphasis added). This fact suggests that Recycle Internet-The Gallery Group is registering domain names in its own name presumably without any rights or interests in such domains.
The Policy, Paragraphs 4(a)(ii) and 4(c) is crystal clear in this respect. The rights and legitimate interests in the domain name must be the Respondent´s rights and interests, and not any other person´s whatsoever.
Additionally the result of the connection independently conducted by the Panel did not show any evidence as to the rights or legitimate interests of the Respondent in the domain name. See 6.3. above.
Therefore, the Panel finds that the Respondent has no rights to or legitimate interests in the domain name at issue.
6.6. Registration in Bad Faith
The Complainant contends that the Respondent has registered the domain in bad faith, by taking deliberate steps to ensure that its true identity cannot be determined. The Panel finds that such assertion is true. The Respondent has attempted to hide behind the alleged and not proven existence of a "Pedro Hierro", while simultaneously not evidencing any Respondent´s rights or interests. See 6.5. above.
Further, the Panel notes that the Respondent is doing business in Madrid, Spain, the geographical area where PEDRO DEL HIERRO is a famous or well-known mark and products and services covered under such marks are sold and provided. This was asserted by Complainant and is undisputed by Respondent. This leads the Panel to conclude that the Respondent must know and most likely knew at the time of registration about the products and services of the Complainant, and about their fame on the Spanish market.
Under the Policy, Paragraph 4(b)(ii) bad faith registration is present if such registration was made to prevent the trademark owner to reflect its trademark or service mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct.
On December 10, 1999 the Complainant sent a notarized letter informing the Respondent of the legitimate rights of the Complainant to the domain name, and asking the Respondent to perform the transfer of such domain. Complaint, Annex 4. On January 19, 2000, Ms. Susana Madruga of Recycle Internet on behalf of the Respondent sent an email in Spanish to Ms. Dolores Carmona of Clarke, Modet & Co., the Complainant´s trademark attorney, to inform about the situation of the pedrodelhierro.com domain name. It was stated that Recycle Internet is offering different services on the Internet, and among them, the registration of domain names on behalf of third parties. As Network Solutions was too slow at registering the domain names, the company registered the domains in its own name, and after that it applied to Network Solutions for Change of the Name of the holder. In this case the company applied for change of the name of the holder in September, 1999. Ms. Madruga added that her company cannot deny the relationship with its client and offered to contact him and to communicate him the Complainant´s request for transfer of the domain name.
The Respondent has not responded specifically to the notarized letter, in particular to its allegations about the Respondent´s lack of rights to the domain name. Instead it tried to appear as being innocent of a bad faith domain name registration, by hiding behind a person – its alleged client – whose real existence has been neither evidenced nor proven. The Respondent presumably knew of the famed marks of the Complainant at the moment of registration. The explanation given about the fact that the registration remained unchanged because of the registrar's inactivity, months after having applied for change of the name of the domain name holder, sounds less than credible. No documents have been presented about the lack of response by Network Solutions, or about the diligence of the Respondent in effectively trying to obtain the name change.
The Panel considers that all such facts are a "pattern of such conduct", which authorizes the Panel to conclude, and to find under the Policy, Paragraph 4(b)(ii) that the domain name registration was made in bad faith.
6.7. Use in Bad Faith
The Complainant asserts that "in fact, there is no use of the domain names", and that "the only use the Respondent is doing in relation to pedrodelhierro.com is preventing the Complainant from making a legitimate use of it, and trying to force the Complainant into a transfer-for-price negotiation".
There is no evidence in the record that the purpose of the registration or the use of the domain name – if any - has been to lead the Complainant to such negotiations, and the Complainant fails to proof such an assertion.
However the Complainant has quite appropriately cited the Panel to WIPO Case D2000-0003 Telstra Corporation Limited v. Nuclear Marshmallows. The Panelist in that case, Mr. Andrew F. Christie, has given an important criterion for a Panel to establish bad faith use in case of inaction:
"(T)he relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. The distinction between undertaking a positive action in bad faith and acting in bad faith may seem a rather fine distinction, but it is an important one. The significance of the distinction is that the concept of a domain name ´being used in bad faith´ is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith".
Following its domain name registration the Respondent´s conduct was very far from any use in good faith. It tried to hide behind a most likely non-existing person such as a "Mr. Pedro Hierro", it failed to develop a web site that could refer to any kind of legitimate activity, and it omitted any other fair use of the domain name.
As seen in the Panel´s independent visit to the Respondent´s web site, by its inaction and by not allowing a connection to any site or page, the Respondent failed to provide any reference to a bona fide use of the domain name. This inaction is confusing Web surfers or prospective customers of the owner of the marks, looking in the Web for the renowned mark PEDRO DEL HIERRO. It deprives them of any indication that www.pedrodelhierro.com has no relationship whatsoever to a Complainant´s site or to Complainant´s marks or activities, being the PEDRO DEL HIERRO mark famous or well known in the Spanish market.
Additionally the Panel considers that the instant case relates to a ".com" domain name. That fact contributes to the likelihood of confusion amongst the Web surfers looking for the site reflecting the PEDRO DEL HIERRO trademark of the Complainant, a "Sociedad Anónima", a corporation with commercial purpose. This is a circumstance of bad faith use as described in the Policy, paragraph 4(b), even if such conduct does not exactly fit within the description of Policy, Paragraph 4(b)(iv) because the purpose of "commercial gain" cannot be established from an empty site or page, nor from an impossible connection to servers.
Finally, it has been said in many WIPO cases that when the parties have residence in the same country, the applicable principles of law include those of the country of residence, and that the Panel may look to rulings of courts in that country. In particular, it has been said that "having in mind the common residence in Spain of both Complainant and Respondent, the laws and principles of the national Spanish law are specially applicable, together with the rules of the Uniform Policy". See WIPO Case No. D2000-0018 Banco Español de Crédito, S.A. v. Miguel Duarte Perry Vidal Taveira .
In its notarized letter the Complainant´s trademark attorney invoked the Complainant´s rights against the Respondent under the Spanish Unfair Competition Law, Articles 6, 11 and 12, and the Spanish Trademark Law, Articles 30 and 31. Such provisions were the legal grounds for the Court No. 5 of Oviedo, Spain, to issue an injunction on June 2, 1999 in the case of nocilla.com . The Court ordered the domain name registrant of nocilla.com, inter alia, to immediately cease in any kind of use of the trademark NOCILLA. It further prohibited, and ordered the registrant to immediately cease in, the use of the domain name.
In the Nocilla case the Spanish Court considered that the fact that the site was "under construction" was no obstacle for issuing the injunction. The defendant knew the plaintiff's products and its trademark registrations, while keeping its web page. That was sufficient basis for the issuance of the injunction. The Panel considers that similar elements are present in the instant case.
For the foregoing reasons, the Panel finds that the domain name at issue has been and is being used in bad faith.
The Panel has found that the domain name pedrodelhierro.com is identical or confusingly similar to the trademarks of the Complainant, and that the Respondent has no rights to or legitimate interests in said domain name. The Panel has further found that the domain name has been registered in bad faith, and that it has been and is being used in bad faith.
Therefore, pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Administrative Panel requires that the domain name pedrodelhierro.com be transferred to the Complainant Cortefiel, S.A.
Roberto A. Bianchi
May 2, 2000
1. The Panelist's mother language is Spanish.
2. The Sole Panelist was Mr. David H. Bernstein.
3. The Sole Panelist was Mr. Luis H. de Larramendi.