WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Corporación Cimex, S.A. v. Garcey Enterprises, Ltd.
Case No. D2002-1036
1. The Parties
The Complainant is Corporación Cimex, S.A., Edificio Sierra Maestra, Avenida Primera Esquina a Cero, Miramar, Playa, Ciudad Habana 10300, Cuba, of Cuba, represented by Clarke, Modet & Co. of Spain.
The Respondent is Garcey Enterprises, Ltd., Clan William Street, 20, Dublin, Ireland, of Ireland.
2. The Domain Name and Registrar
The disputed domain name is <corporacioncimex.com> which is registered with Network Solutions, Inc. Registrar.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 7, 2002. On November 7, 2002, the Center transmitted by email to Network Solutions, Inc. (Registrar) a request for "registrar verification" in connection with the domain name at issue. On date November 15, 2002, Network Solutions, Inc.(Registrar) transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.
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), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 15, 2002. In accordance with the Rules, paragraph 5(a), the due date for Response was December 5, 2002. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 9, 2002.
The Center appointed Eva Fiammenghi as the sole panelist in this matter on December 24, 2002. 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.
4. Factual Background
The Complainant is a leading corporation involved in different economic fields such as: car rentals, travel tours operating through its subsidiary under the name of Havana Tour S.A.; financial operation and processing of credit card payments operating under the name of Fincimex; Immobiliaria Cimex S.A. is another division of Cimex, which is developing real estate market in Cuba and various kind of projects in the Caribbean.
Cimex Corporation S.A. is primarily operating in Cuba and with its 1200 subsidiaries companies, as evidenced in Exhibit 14, it is representing the 6% of the Gross Domestic Product of Cuba.
The Complainant is also, among others, the owner of the registered trademarks:
1) DATACIMEX classes 41, 37 and 42 in Cuba and
2) CIMEX IBERICA class 4 in Spain owned by its affiliated Company Cimex Iberica S.A. as well as the owner of the well known trademarks:
3) RON VARADERO
4) CARIBBEAN CLUB
all registered worldwide.
The Complainant is, since June 12, 2002, also the owner of the following domain names:
the Complainant registered this domain names only because the Defendant forgot to renew them.
The Defendant, owner of the domain name <corporacioncimex.com>, has been using the domain name to give access to a porno website with the aim to put on sale the domain name for a valuable sum in excess of the out of pocket costs directly related to the domain name.
In the fax letter sent to the Complainant and shown as evidence (Exhibit 10), the Respondent asked for 1.500.000.00 US $ to purchase the domain name <corporacioncimex.com> and the national trademarks "RON CAREBBEAN" and " RON VARADERO" filed in United Kingdom.
From the evidences shown by the Complainant is clear that Garcey Enterprises Ldt., is the registrant of the domain name <corporationcimex.com> and, the owner of the national trademarks in United Kingdom (RON CAREBBEAN and RON VARADERO) The Garcey Enterprises Ltd. is represented by Mr. Silvarredonda who is the proxy-holder and the General Manager and he is also the person who executed the document where the Complainant has been asked for a sum of 1.500.000.00 US$ to purchase the domain name and the national trademarks in United Kingdom. For all these reasons Garcey Enterprises Lts. can be leaded to the above mentioned activities through the person of Mr. Silvarredonda, as from Exhibit 10 –12 –15.
5. Parties’ Contentions
The Complainant contends that the domain name <corporacioncimex.com> is identical to its brand name Corporacion Cimex S.A. and is confusingly similar to its trademarks "DATA CIMEX " and "CIMEX IBERICA".
The complainant contends that the Respondent has no rights or legitimate interests in respect of the domain name. In fact the Complainant declares that the respondent knew and was unquestionably aware of the importance and of the well-known trademarks, business name and identity of the Complainant.
The Complaint asserts to have never granted to the Respondent license or consents, express or implied, to use the name "CIMEX" or <corporacioncimex.com> in a domain name as an agent or partner of the Complainant.
The Complainant declares that the domain name <corporacioncimex.com> has been registered and has been used in bad faith. Evidences of bad faith of the Respondent are based on the fact that the Respondent has been trying to sell the domain name , and on the fact that on the website "www.fegaex.org" there is a link to the website "corporacioncimex.com" where it was written "INTERESTING FOR YOUR BUSINESS IN CUBA" as well as in Spanish language "DE INTERES PARA EMPRESARIOS EN CUBA".
The website " www.corporacioncimex.com" was a hardcore and porno website and this makes the Complainant sure of the fact that the only purpose of the Respondent was taking illegal advantages and damaging the Complainant’s Company image, distorting the Complainant’s name and brand in the market.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant mast prove that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the Respondent has no rights or legitimate interest in respect of the domain name ;and
(iii) the domain name has been registered and has been used in bad faith.
Where a Respondent, who has been properly notified of the Complaint, fails to respond, the Panel is entitled to draw such inferences as it considers appropriate (Rule 14(b)). However the facts speak for themselves and it is unnecessary in this case for the Panel to draw any specific inferences, save that where there is doubt, the Panel will resolve the doubt in favour of the Complainant.
A. Identical or Confusingly Similar
The Complainant is the owner of the Cuban trademarks
1) registration No. 123.282 "DATACIMEX",
2) registration No. 123.283 "DATACIMEX"
3) registration No. 123.355 "DATACIMEX"
and by one of its subsidiary Company Cimex Iberica S.A. is the owner of the Spanish trademark registration No.1.089.861 "CIMEX IBERICA".
The Panel finds that the Complainant has trademark rights and the domain name <corporacioncimex.com> is confusingly similar to the trademarks in which the Complainant has rights and the domain name is identical to the brand name of the Complainant.
B. Rights or Legitimate Interests
The Panel is of the view that the Complainant’s trademarks are known and famous in the field of retail store, food services (supermarkets, service station, fast food outlets, photo developing, car washes etc. etc.) real estate, cable and satellite television distribution, travel agency etc. etc.
The Panel accepts the Complainant’s assertion not to be in any relationship with the Respondent.
Paragraph 4(c) of the Policy which is directed to Respondents, indicates how a Respondent may show to have rights or legitimate interests in respect of a domain name. That paragraph comprises a non –exhaustive list. While the obligation is on the Complainant to prove the elements of paragraph 4(a) (ii) of the Policy, the burden shifts on to the Respondent.
The Respondent has not responded. The Panel can think of no reason why the Respondent could reasonably be said to have any rights or legitimate interests in respect of the domain name .
Accordingly the Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy comprises a non exhaustive list of circumstances any of which, if found by the panel to be present, shall constitute evidence of bad faith registration and use of the domain name.
Paragraph 4(b) appears to the Panel to be relevant here, as follows:
"For the purposes of paragraph 4(a) (iii) the following circumstances in particular but without limitation if found by the Panel to be present shall be evidence of the registration and use of the domain name in bad faith.
(i) circumstances indicating that you have registered …..the domain name primarily for the purpose of selling …..the domain name registration to the Complainant …for a valuable consideration in excess of your documented out of pocket costs directly related to the domain name….."
by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or……..by creating a likelihood of confusion with the Complainant’s mark……
The Panel finds that after registration of the domain name the Respondent was prepared to demand a sum of money to transfer the domain name well in excess of his out of pocket costs and from the exhibit 11 it appears that the Respondent intentionally attempted to attract, for commercial gain, Internet user to his website, by creating a likelihood of confusion with the Complainant’s brand name and trademarks.
The Complainant has set out his allegation clearly and those allegations appear to the Panel to confirm exactly the situation. The Panel finds that the domain name has been registered and has been used in bad faith within the meaning of paragraph 4(b)(i), 4(b)(iv) and 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with Paragraphs 4(a) of the Policy and 15 of the Rules, the Panel orders that the domain name, <corporacioncimex.com> be transferred to the Complainant
Date: 10 January, 2003