WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Red Nacional de Ferrocarriles Españoles v. Jesķs Hidalgo Álvarez
Case No D2000-1025
1. The Parties
Complainant is Red Nacional de Ferrocarriles Españoles, a Corporate Public Entity duly organized and existing under the laws of Spain, with its principal place of business located at Avenida Pio XII, Nķmero 110, Madrid, España, 28036.
Respondent is Mr. Jesķs Hidalgo Álvarez , an individual whose address is Calle Obispo Alonso SuŠrez 16, 3-B, Jaťn, España, 23008.
2. The Domain Name and Registrar
The domain name under dispute is "renfe.org" (the "Domain Name").
The registrar of the domain name under dispute is Network Solutions, Inc. ("NSI" or the Registrar), with business address in Herndon, Virginia, USA.
3. Procedural History
On August 11, 2000, and August 14, 2000, Complainant submitted its Complaint through e-mail and hardcopy, respectively, with the required filing fee for a single-member Panel, to the World Intellectual Property Organization ("WIPO") Arbitration and Mediation Center (the "WIPO Center"), in accordance with the Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, the Rules for Uniform Domain Name Dispute Resolution Policy (the " Rules"), and WIPOís Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("WIPOís Supplemental Rules).
On September 7 and September 11, 2000, Complainant submitted through e-mail (with copy to Respondent) and hardcopy, additional information related to the obtainment of the international trademark number 738425 for several products and services, in classes 12, 16 and 39, for RENEFE from the WIPO on August 31st, 2000, in the Russian Federation, Hungary, Poland, Czech Republic, Romania, Slovakia, Switzerland, Yugoslavia and Norway, having as base several registrations that were obtained in Spain on September 21, 1998 and July 6, 1998.
WIPO sent a "Request for Registrar Verification" via email to NSI requesting, a confirmation that NSI had received a copy of the demand; that the domain name under dispute is registered before NSI; that Respondent is the current registrant of such domain name; and full contacts details available under the WHOIS database.
On September 24, 2000, WIPO received via e-mail from NSI a certain "Network Solutionsí Verification Response" confirming the above as well as that the Domain Name is currently registered to Respondent and is in "active" status, and that a certain Network Solutions 5.0 Service Agreement is in effect.
The undersigned Panel has independently determined and agrees that the Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy (the " Policy"), the Rules, and WIPOís Supplemental Rules.
On September 29, 2000, WIPO properly sent via e-mail and hardcopy through express mail to Respondent and to its administrative, technical, billing and zone contacts, a "Notification of Complaint and Commencement of Administrative Proceedings" enclosing copy of Complainantís complaint. A copy has also been communicated to the ICANN and to the Registrar.
Such hardcopy was received by Respondent as confirmed on October 18, 2000. Furthermore, hardcopy of such Complaint as confirmed by Complainant was also previously sent by Complainant to Respondent via postal-mail and e-mail on August 11th, 2000.
This Panel considers that the complaint was properly notified to the registered domain-name holder, the technical contact, and the administrative contact as provided for in paragraph 2(a) of the Rules.
On October 18 and October 25, 2000, Respondent submitted and complemented, respectively, its Response through e-mail, to the WIPO Center.
An Acknowledgment of the Receipt of Respondentís Response was sent to Respondent by the WIPO, in English and Spanish versions on October 20, 2000.
Respondent failed to elect whether the dispute be decided by a single-member or by a three-member, and therefore a single panelist was appointed as proposed by the Complainant, as may be evidenced from paragraph 78 of Complainantís complaint.
Note is hereby taken of the limited argumentation and evidence submitted by Respondent in his defense, as well as to his general objections to being submitted to this administrative proceedings and to the language in which the same is being handled.
This Panel considers that upon receipt of the Complaint by Respondent, he has been given a fair and reasonable opportunity to properly and diligently respond, exercise its rights, defend its case, submit all relevant information, documentation, as well as any allegations, as it may consider appropriate.
To assure that the both parties be treated with equality in these administrative proceedings, this Panel has decided not to request any additional information or clarification that could in any manner be considered as a request for a reconsideration to their preparation of their case or defense, respectively, eventually for the benefit of either party with a contingent detriment of the other. Both parties have clearly had such opportunity and each of them has decided to either prepare the case personally or with the assistance of translators, legal counsel or other specialists, as required, or as a sole defense declare a general impossibility to do so. It is a general principle that the lack of knowledge of the law does not exempts the obligation to comply with it. Any party has a right to defend itself as well as the possibility for making a judgement and decide whether it wishes to do so or not. Furthermore, to do so in a diligent and responsible or in any other manner. This Panel considers that Respondent when responding this case made his business and personal decisions.
On November 9, 2000, the undersigned signed and sent to the WIPO, a Statement of Acceptance to participate as Single Member Panelist and a Declaration of Impartiality and Independence.
On November 13, 2000, WIPO sent to Complainant and Respondent a "Notification of Appointment of Administrative Panel and Projected Decision Date", appointing Pedro W. Buchanan Smith as Sole Panelist and scheduling November 26, 2000, as the date for issuance for the Panelís decision, notifying the above pursuant to paragraphs 6(f) and 15(b) of the Rules. On the same date, WIPO transferred the case file to the Sole Panelist, with copy being sent to Complainant and Respondent.
The Panel has not received any further requests from Complainant or Respondent regarding other submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information, statements or documents from the parties, as from the information and documentation received no explanation or confirmation from either parties allegations is required, nor there is the need as an exceptional matter, to hold any in-person hearings as necessary for deciding the complaint, as provided for in paragraphs 12 and 13 of the Rules. Therefore, the Panel has decided to proceed under the customary expedited nature contemplated for this type of domain name dispute proceedings.
The language of the proceeding is English, as being the language of the domain registration and Service Agreement (as it was eventually made through the American Registrar NSI), pursuant to paragraph 11(a) of the Rules, and also in consideration to the circumstances of this administrative proceedings and to the fact that there is no express agreement to the contrary by the parties. Furthermore, in order to procure for the parties a fair and reasonable opportunity to respond, exercise their rights and to present their respective cases, and that the both parties be treated with equality in these administrative proceedings, the Panelist has agreed to receive and consider all writs, information and documents submitted also in the Spanish language, under the authority granted in the terms of paragraph 11(a) of the Rules.
4. Factual Background
The Complainant, is a corporate public entity created in 1941, by the Spanish Railway a Road Transportation Act. As per the Spanish Ground Transportation Act, the Complainant is delegated with the commercial exploitation of the railways in Spain. Currently, the Complainant exploits more than 12,300 commercial lines, having transported almost 419 million people in 1999, as well as more than 25, 300 tons of goods. Moreover, people and merchandise transportation, computing, train maintenance, commercial exploitation of the Spanish network of railway stations, and in general maintenance and management services for the above, are supplied through the RENFE trademark, being consequently, one of the most prominent trademarks in Spain.
RENFE is already using the Internet for the development of online commercial activities, having its main web page at "http://renfe.es". Through TIKNET, RENFE has established an online service for the sale of its train tickets, as well as offers information regarding schedules, prices, travel possibilities, etc. (at "http://canal.renfe.es/tiknet/entrada.html"), and has established an online service for the sale of all kind of items referred to trains and railroads. (at "http://renfe.es/tienda-renfe/index.html").
A Network Solutionsí WHOIS database search indicates that the record of registration of Complainantís Domain Name "renfe.net" was created on December 12, 1998, prior to Respondentís registration of the domain name "renfe.org" which was created on December 30, 1999.
In support of its Complaint, Complainant submitted copies of the following Trademark Registrations:
a) Federal Trademark RENFE and design, registered in Spain in the General Office of Spanish Bureau of trademarks and patents under registration Number 2144686, issued on February 5, 1999, on class 42 (with a duration of 10 years) covering several tourist related services and activities, with application date on February 23, 1998, with Red Nacional de los Ferrocarriles Españoles (RENFE) (sic) as the sole and exclusive listed owner;
b) Registration of communitarian trademark application before the Office for Harmonization in the Internal Market (application dated May 22, 2000), on class 12, 16 and 39 with request number 001667898 covering products and services including but not limited to transportation services.
c) The Complainant has also requested before the World Intellectual Property Organization the registration of the following trademark: on May 19th 2000 as a Class 12, 16 and 39, graphical trademark, aiming at having effects in Switzerland, the Czech Republic, Hungary, Norway, Poland, Rumania, the Russian Federation, Slovakia and Yugoslavia.
d) The Complainant is the registrant of the following domain names: "renfe.net", registered before NSI on December 12th 1998; renfe.es registered before NIC-ES; "el-tren.com" registered before NSI on November 11th 1999; "gruposantacruz.com" registered before NSI on November 12th 1999; "infotren.com" registered before NSI on August 7th 1999; "lastiendasdelaestacion.com" registered before NSI on September 7th 1999; "vialia.com" registered before NSI on August 7th 1999; and "renfe.org", the Registrar of which is also NSI.
5. Partiesí Contentions
The Complainant alleged that the domain name "renfe.org", used and registered by Respondent, is identical to the RENFE trademark owned by Complainant in Spain. That the above is given when one of them is the same than the other one, what it certainly occurs in that case where the trademark and the domain name are interchangeable without being possible to appreciate any difference at all. That a first criterion for the evaluation of the existence of an interest important enough to justify the registration of a domain name, and to assess the Respondentís right or legitimate interest at the time of registering "renfe.org" is the purpose that moved the Respondent to register such domain name. That Respondent has no relationship at all with the legitimate owner of the rights related to the "RENFE" trademark. That consequently, it must be concluded that the registration by the Respondent of "renfe.org" was not guided by a legitimate purpose, as it could be the use of the domain name for the development of the commercial activities linked to a trademark owned by the Registrant. That Respondent's only goal of such a registration was to sell or otherwise transferring it to Complainant or to another third party or to impede the use of the disputed domain name by RENFE. That the lack of use of the disputed domain name, appear to show that the Respondent, at the time of registering the disputed domain name, was not aiming to use it for professional or private activities. That on the contrary, it looks as if the Respondent was only intending to impede the registration of the disputed domain name by the legitimate owner of the "RENFE" trademark. That the Respondent has never had any right to the trademark "RENFE". That RENFE is the only holder of the rights related to the "RENFE" trademark, without any participation by the Respondent or any third party in such rights. That therefore, the Respondent does not have a fair interest in, or right to the "RENFE" trademark and, thus, has no legitimate use for such a trademark. Consequently, the Respondent has no right at all to the "renfe.org" domain name.
That the name "RENFE" constitutes such a well-known trademark in Spain that it is practically impossible that there was a "miraculous coincidence" in the present case. That the Respondent registered "renfe.org" having clearly in mind that it was registering a domain name corresponding to a third party trademark. That on June 7th 2000 RENFE sent the Respondent through a Public Notary a letter expressly notifying him the illegality derived from the registration of "renfe.org" by an individual having neither rights on the affected trademark, nor any kind of connection with RENFE. That the Respondent has not given any kind of answer regarding such a letter.
That the Respondent has registered more than 45 domain names corresponding all of them to famous trademarks and denominations.
That to Complainant it is clear that at the time of registering the disputed domain name, the Respondent was basing its behaviour on criteria completely opposed to good faith, as such a registration corresponded to an evident "cybersquatting" strategy. That the Respondent has adopted a passive attitude regarding the web page linked to the disputed domain name, which may be considered as a cause of bad faith. That such passive tenancy of a domain name has implied a use in bad faith. That Respondentís behaviour at the time of registering the disputed domain name and its subsequent lack of use, show as unequivocal intention, the "capture" of a strategic domain name for the legitimate owner of the corresponding trademark. Complainant also considers that the (disputed) domain name is so obviously connected with the Complainant and its services that its very use by someone with no connection with the Complainant suggest opportunistic bad faith.
That the Complainant has held the "RENFE" trademark for years, and has registered its ".net" domain name in December 1998. On the contrary, Respondent registered the disputed domain name in December 1999. Therefore, that Respondent by registering "renfe.org", it was aiming to impede the use on the Internet of the most important trademark for an international company, such as RENFE, impeding therefore the normal development of its online activities.
Lastly, Complainant has requested under paragraph 4(i) of the Policy, that the Administrative Panel appointed in this proceeding issue a decision ordering that the contested domain name be transferred to the Complainant.
Respondent manifests that it does not wish to submit to this administrative proceedings; that he does not understand the nature and content of the demand because of his lack of knowledge of the English language, reason for which he considers to be completely without defense, and therefore rejects that the same be handled in the English language; that the domain was acquired with no profit purposes; and that Respondent has not initiated the operation under such domain due to the lack of sufficient funds.
6. Discussion and Findings
The Panel considers that the Respondent by registering the contested domain name with Network Solutions, Inc. (an ICANN accredited domain name registrar), it agreed to be bound by all terms and conditions of Network Solutions Service Agreement, and any pertinent rule or policy, and particularly agreed to be bound by the Policy (incorporated and made a part of the Service Agreement by reference), which policies request that proceedings be conducted according to the Rules and the selected administrative-dispute-resolution service provider's supplemental rules, in the present case being the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy. Therefore, the dispute subject matter of this proceeding is within the scope of the above mentioned agreements and policy, and this Panel has jurisdiction to decide this dispute.
Furthermore, the Panel considers that in the same manner by entering into the above mentioned Service Agreement, the Respondent agreed and warranted that neither the registration of its domain name nor the manner in which it may intend to use such domain name would directly or indirectly infringe the legal rights of a third party, and that in order to resolve a dispute under the Policy, Respondentís domain name registration services may be suspended, cancelled or transferred.
The Panel also particularly considers that it is essential to dispute resolution proceedings that fundamental due process requirements be met.
Such requirements include that the parties and particularly the Respondent in this case be given adequate notice of proceedings initiated against them; that the parties may have a fair and reasonable opportunity to respond, exercise their rights and to present their respective cases; that the composition of this Panel be properly made and the parties be notified of the appointment of this Panel; and, that both parties be treated with equality in these administrative proceedings.
In the case subject matter of this proceedings, the Panel is satisfied that these proceedings have been carried out by complying with such elemental due diligence requirements, and particularly contemplating the notification of the filing of the Complaint and the initiation of these proceedings giving the Respondent a right to respond.
Failure by the Respondent to submit evidence supporting its case or to prove its rights and legitimate interest is not due to any omission under these proceedings. Respondent did not reply to Complainantís contentions, neither submitted relevant evidence supported any arguments by Respondent.
There is sufficient and adequate evidence confirming the above.
This Panel as directed by paragraphs 14(a) and (b) and 15(a) of the Rules, shall decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, and may draw such inferences there from as it may consider appropriate.
Paragraph 4(a) of the Policy directs that the Complainant must prove the presence of each of the following elements: (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; and, (ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and, (iii) that the Domain Name has been registered and is being used in bad faith.
This Panel finds that Respondentís Domain Name is totally identical to Complainantís RENFE trademarks. In this particular case, the domain name and the trademark are exactly the same, without being possible to appreciate any difference at all.
Furthermore, this Panel finds that there is no indication that the Respondent has any rights or legitimate interests in respect of the domain name as it has not used or prepared to use the RENFE domain name in connection with any bona fide offering of goods or services as contemplated under Paragraph 4(c)(i) of the Policy; nor that the Respondent is commonly known by the domain name as contemplated under Paragraph 4(c)(ii) of the Policy; nor that the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue as contemplated under Paragraph 4(c)(iii) of the Policy.
Furthermore, there is no information or documentation evidencing that Respondent may have been guided by, or may have in general, any relationship, right, legitimate interest or specific purpose at all, to register and use the domain name under dispute, or to develop an activity connected to such domain name which is clearly identical to a very well known trademark in the country where Respondent has its registered address, and of which the Respondent manifested nor evidenced any right or interest at all. Respondent did not provided evidence nor submitted reasonable argumentation supporting any related or possible legitimate use of the domain name under dispute. Finally, the lack of use of such domain name under dispute may also evidence the non existence of a right or legitimate interest in such domain name.
The Panel also finds that Respondent has registered and used the Domain Name in bad faith, in particular but without limitation, in view that, as well, such domain name under dispute is clearly identical to a very well known trademark in the country where Respondent has its registered address. Therefore, Respondent had clearly in mind that it was registering a domain name corresponding to a third partyís very well-known trademark. This Panel in analyzing this case has found questionable the acquisition of the domain name under dispute by Respondent. Therefore, this Panel infers that the registration was made by the Respondent, to prevent the owner of such trademark from reflecting their mark in a corresponding domain name; that such domain name is so obviously connected with the Complainant that its registration suggests opportunistic bad faith, and has intentionally created a situation that will affect legal rights of Complainant; that it may be inferred that Respondent intends to attract for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainantís mark, as to the source, sponsorship, affiliation, or endorsement of Respondentsí website; pursuant to Paragraph 4(b)(ii) and (iv) of the Policy.
There is also no information or documentation evidencing that Respondent has responded to a certain communication from Complainant addressing the use of their trademark within the domain name under dispute.
This Panel finally considers that Respondent, by registering the domain name in bad faith, it is very unlikely that this domain name will be used in good faith, as evidenced from the above. Furthermore, that the lack of use of a domain which is clearly identical to a very well known trademark in the country where Respondent has its registered addresses, constitutes a passive use tending to prevent the owner of such trademark from reflecting their mark in a corresponding domain name, as well as to disrupt the business of such party, pursuant to Paragraph 4(b)(ii), and (iii) by analogy, of the Policy.
Lastly, it is hereby noted that no settlement has been reached by the Parties and made known to this Panel prior to the rendering of this Panelís decision, which may eventually affect or give ground for termination of this administrative proceedings as provided for under paragraph 17(a) of the Rules, nor is this Panel aware of the existence or initiation of any other type of legal proceedings before a court of competent jurisdiction for independent resolution, regarding the domain name dispute as contemplated under paragraph 4(k) of the Policy.
Therefore, and in consideration to the Complaintís compliance with the formal requirements for this domain dispute proceeding, to the factual evidence and legal contentions that were submitted, to the conclusive confirmation of the presence of each of the elements contemplated in Paragraph 4(a)(i), (ii), and (iii) of the Policy, and on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and other applicable rules and principles of law, as directed by paragraphs 14(a) and (b) and 15(a) of the Rules, this Panel decides:
(1) that the Domain Name registered by Respondent is identical to Complainantís trademark RENFE;
(2) that Respondent has no rights or legitimate interests in respect of the "renfe.org" Domain Name; and
(3) that the "renfe.org" Domain Name has been registered and is being used in bad faith by the Respondent.
Therefore, the Panel requires, pursuant to what is provided for under Paragraphs 3(c) and 4(i) of the Policy, that the domain name "renfe.org" be transferred to Red Nacional de Ferrocarriles Españoles, Complainant.
Pedro W. Buchanan
Dated: December 20, 2000