WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Unión Eléctrica Fenosa v. Sydey Hussain
Case No. D2000-0893
1. The Parties
The Complainant is Unión Eléctrica Fenosa, a company based in Madrid, Spain, with its principal place of business located at C/ Capitán Haya 53, Madrid - 28020, Spain (the "Complainant ").
Respondent is Mr. Sydey Hussain of CPIC NET, who resides at 15, 5th Street, Closter, NJ 07624 USA (the "Respondent").
2. The Domain Name and Registrar
The domain name at issue is "unionfenosa.net". The registrar is register.com, Inc. (the "REGISTRAR") of New York, New York, USA.
3. Procedural History
The WIPO Arbitration and Mediation (the "Center") received the Complaint of the Complainant on July 31, in hardcopy.
The Complainant made the required fee payment.
On August 1, 2000, the Center sent to the REGISTRAR, a requestfor verification of registration data that was answered in August 4, 2000, when the REGISTRAR confirmed, inter alia, that the domain name in dispute was registered through the REGISTRAR, that the "current registrant" is the Respondent, and that the domain name is active.
Having verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules, and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), the Center on August 10, 2000, sent the Respondent a notification under Paragraph 2(a) of the Rules together with copies of the Complaint.
The Respondent did not answer to the Complaint, and in consequence the Center sent to the parties in August 31, 2000, the Notification of Respondent Default.
On September 20, 2000, after receiving his completed and signed Statement of Acceptance and Declaration of Impartiality and Independence, the Center appointed Mr. Antonio Millé as the single member of the Administrative Panel (the "Panelist"). On the same date, the Center notified the parties of this appointment.
On September 22, 2000, the Panelist received via courier a complete copy of the Complaint and the corresponding enclosures.
4. Factual Background
The trademark upon which the Complaint is based is Unión Fenosa. The Complainant attached copies proving that in the years 1984 to 1990 it registered the trademark in Spain different times in classes 1 to 7 and 9 to 42.
The Complainant asserts that it is engaged in multiple business related with the development of projects for the electricity industry, showing an important international performance in the provision of services to public utilities companies in Latin America, Central and Easter Europe, Asia-Pacific, Western Europe and Africa.
5. Parties' Contentions
5. 1 Complainant contends that:
a) The domain name "unionfenosa.net" is identical, and therefore confusingly similar to the trademark Unión Fenosa and to the corporate trade name and that therefore it may cause damages to the Complainant’s goodwill.
b) Respondent has no rights or legitimate interest in the contested domain name and is not making any use of the domain name in connection with any non-commercial activity.
c) The "unionfenosa.net" domain name:
(i) Has been registered in bad faith, because Unión Fenosa is a very well known trademark and company whose international activity is broadly known.
(ii) Is being used in bad faith, because the mere use the Respondent is doing in relation with the domain name is preventing the Claimant from making a legitimate use of it and the Respondent is presently using it to advertise future services related with the Internet in a way that may create confusion in the public and make them believe that the Respondent is somehow connected with or acting on behalf of the Claimant.
5.2 Respondent did not answer to the Complaint:
Duly notified of the Complaint, the Respondent did not answer it.
6. Discussion and Findings
The Policy sets out in Paragraph 4(a) the cumulative elements that shall be proved by the Complainant in order to succeed in an administrative proceeding for abusive domain name registration. We will examine each one of these elements in the following points:
"4.a.(i) Identity or Confusing Similarity"
Being that the particle "net" is an attribute of the gTLD, common to all the domain names under this TLD, and there being no significance in the absence of a the separation between the words "union" and "fenosa", it is beyond question that the trademark Unión Fenosa is identical to the domain name "unionfenosa.net". Therefore, the requirement of Paragraph 4.a.(i) is met.
"4.a.(ii) Absence of Respondent Rights or Legitimate Interest in the Domain Name"
Neither "Unión" nor "Fenosa" are part of the name of the individual registering the contested domain name, neither of the denomination of the business or entity "CPIC NET". The Respondent has not answered the complaint giving any basis to a right or legitimate interest in respect to the use of the phoneme "unionfenosa" as a domain name.
On this basis, the Panelist concludes that the Respondent has not any legitimate interest in the domain name "unionfenosa.net". Therefore, the requirement of Paragraph 4.a.(ii) is met.
"4.a.(iii) Respondent Registration and Use of the Domain Name in Bad Faith"
Being "Unión Fenosa" a fantasy denomination, one of which components ("Fenosa") is a phoneme without signification in any language known by the Panelist, it is not imaginable a legitimate reason that could drive the Respondent to choosing this denomination as domain name. The Panelist is forced to conclude that the reason for that choice was the intention to use as domain name the trademark and corporate name of a internationally well known company. Therefore, the domain name registration was performed in bad faith.
The Complainant attached a copy of the home (and single) page of the site functioning on the Internet address "futuresite.register.com/futuresite.shtml" in which the REGISTRAR provided a service giving the notice "Coming Soon!" to those that "recently registered" a domain name with register.com. The Panelist entered in his Internet navigation tool the address "unionfenosa.net" acceding to that page.
Different decisions of administrative panels of the Center -such as Decision
D2000-0239 quoted by the Complainant- has considered the "passive" use of a domain name registered in bad faith as a bad faith use, because in the practice "prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name" and introduce the risk of being the domain name transferred to a competitor or used to confound the initial interest of Internet users. The circumstances of the Case and the silence of the Respondent about the existence of any of the circumstances listed in § 4.c. of the Policy to demonstrate its rights or legitimate interest to use the domain name, convince the Panelist that in this case a passive use in bad faith of the disputed domain name does exist.
Because of this, the Panelist arrives at the conclusion that the Respondent has registered and used the "unionfenosa.net" domain name with bad faith. Therefore, the requirement of Paragraph 4.a.(iii) is met.
Complainant has proved that the domain name is identical to its trademark, that Respondent has no rights or legitimate interest in the domain name, and that Respondent registered and used the domain name in bad faith. Therefore, according to Paragraph 4.i of the Policy, the Panel requires that the registration of the domain name "unionfenosa.net" be transferred to the Complainant.
Dated: October 4, 2000