WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Cervecería Polar los Cortijos, C.A. v. Ronald Rivas Montes de Oca

Case No. D2003-0566

 

1. The Parties

The Complainant is Cervecería Polar los Cortijos, C.A., Caracas, Venezuela, represented by Anzola Raffalli y Rodriguez, Venezuela.

The Respondent is Ronald Rivas Montes de Oca, Caracas, Venezuela.

 

2. The Domain Name and Registrar

The disputed domain name <maltinpolar.com> is registered with GoDaddy.com (Go Daddy Software, Inc.), United States of America.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 18, 2003. On July 21, 2003, the Center acknowledged receipt of the complaint, and transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On the same day, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and as 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 July 24, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was August 13, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on August 15, 2003.

The Center appointed Roberto A. Bianchi as the sole panelist in this matter on August 26, 2003. 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. This decision is due on September 9, 2003.

The complaint was submitted in English, which is the language of the registration agreement. On July 24, 2003, Respondent sent an email to the Center at the time he received the notification of the complaint, stating in Spanish that he does not understand English. The Center then sent him a translation into Spanish of the notification of the complaint. However Respondent did not ask that the language of this proceeding be any other language than English. Accordingly, pursuant to Rules, Paragraph 11(a) the language of the administrative proceeding shall be English.

 

4. Factual Background

Because Complainant has made precise contentions of fact supported by sufficient documentary evidence that has not been contested by Respondent, the following facts are held to be true:

Cerveceria Polar C.A. assigned all rights over its Venezuelan trademarks to Financorp Banco de Inversión, C.A. Later, Financorp Banco de Inversión, C.A. executed a trademark assignment agreement with Morgan Grenfell Trustee Limited. This last company changed its name to Deutsche International Trustee Services C.I. and as such assigned all rights over the trademarks to Deutsche Transnational Trustee Corporation Inc., the current owner of the trademarks. Deutsche Transnational Trustee Corporation Inc., executed with the company Alprocer B.V. a non-exclusive Trademark License Agreement with right to sublicense. The above referred company sublicensed the rights over the trademarks to Cerveceria Polar C.A., Complainantís holding company, which adopted that corporate name after Complainant changed its corporate name from Cervecería Polar, C.A. to Cervecería Polar Los Cortijos, C.A. in 1999 and this company sublicensed the rights over the trademarks to the Complainant, Cerveceria Polar los Cortijos C.A.

Complainant as a licensee has legitimate rights over the following trademarks:

Trademark

Registration Nį

Class

Goods

Country

MALTIN

139.273

46 Nat.

Food and food ingredients

(Local and/or foreign products)

Venezuela

MALTIN

139.274

48 Nat.

Malt and beer beverages (Local and/or foreign products)

Venezuela.

MALTIN

139.272

45 Nat.

Natural and artificial mineral and carbonated waters (Local and/or foreign products)

Venezuela.

MALTIN POLAR (Label)

117.614-F

32 Int.

Natural and artificial mineral and carbonated waters (Local and/or foreign products)

Venezuela.

The most recent trademark registrations have been requested under the new corporate name of Complainant, Cervecería Polar los Cortijos C.A.. Complainant has shown that it has rights over the following trademarks registered or applied for in its name in various countries under international classes:

Trademark

Application

Registration Nį

Class

Goods

Country

MALTIN

40881-C

32 Int.

Beers, stout, malt, mineral and carbonated waters and other non-alcoholic beverages

Bolivia

MALTIN POLAR (Label)

40901-C

32 Int.

Beers, stout, malt, mineral and carbonated waters and other non-alcoholic beverages

Bolivia

MALTIN POLAR

196007

32 Int.

Beverages of malt, of class 32.

Chile

MALTIN POLAR

M2504196

32 Int.

Beers, mineral and carbonated waters and other non-alcoholic beverages; fruit beverages and juices, syrups and other preparations to make beverages

Spain

MALTIN POLAR

MALTIN

1.637.504

89594

32 Int.

31 Int.

All products of class 32.

Agricultural, orchard, forestry products, and grains, not included in other classes, live animals, fresh fruit and vegetables, seed, plants, natural flowers; animal feedstock, malt .

France

Guatemala

MALTIN POLAR

99.762

31 Int.

Agricultural, orchard, forestry products, and grains, not included in other classes, live animals, fresh fruit and vegetables, seed, plants, natural flowers; animal feedstock, malt.

Guatemala

MALTIN POLAR

339/131

32 Int.

Beverage of malt

Haiti

MALTIN

42.019

32 Int.

Beer, ale and porter, mineral and carbonated waters and other non-alcoholic beverages, syrups and other preparations to make beverages.

Honduras

MALTIN

42.020

32 Int.

Beer, ale and porter, mineral and carbonated waters and other non-alcholic beverages, syrups and other preparations to make beverages.

Honduras

MALTIN POLAR Label

 

32 Int.

Beer, mineral and carbonated waters and other non-alcoholic beverages, fruit beverages and juices , syrups and other preparations to make beverages.

Dominican Republic

MALTIN (Label)

046768

32 Int.

Beverages of malt and beer

Panama

MALTIN POLAR and Label

059747

32 Int.

Beverages of malt and beer

Panama

MALTIN POLAR and Design

124522/01

32 Int.

Beer, ale and porter, mineral and carbonated waters, non-alcholic beverages, syrups and other preparations to make beverages.

Panama

MALTIN

11437

32 Int.

Beverages of malt and beer

Aruba

MALTIN POLAR (Label)

21717

32 Int.

Beverages of malt and beer

Aruba

MALTIN POLAR (Label)

21759

32 Int.

Beverages of malt and beer

Aruba

MALTIN POLAR and Design

0519171

32 Int.

All kinds of beers and malt beverages, mineral and carbonated waters and other non-alcoholic beverages; fruit beverages and juices, syrups and other preparations to make beverages.

Mexico

MALTIN POLAR

0519170

32 Int.

All kinds of beers and malt beverages, mineral and carbonated waters and other non-alcoholic beverages; fruit beverages and juices, syrups and other preparations to make beverages.

Mexico

MALTIN POLAR and Design

118559/01

32 Int.

Beverages of malt

Ecuador

On August 29, 2002, Respondent registered the <maltinpolar.com> domain name in its own name with Go Daddy Sotfware. Complaint, Annex 2.

In 2002, Respondent personally contacted Mr. Carlos Santeliz, the manager of the trademark MALTIN POLAR. He also contacted by phone Mr. Luis Miguel Gonzalez, responsible for Empresas Polarīs and Complainantís website, offering the domain name <maltinpolar.com>, which had been registered by Respondent a couple of days earlier, for rent. On September 26, 2002, Respondent sent an e-mail addressed to Ms. Carlén Sánchez, trademark and patent in-house counsel of Empresas Polar (a holding company of Complainant), and to Mr. Carlos Martínez, sports general manager of Empresas Polar, stating that Respondent registered the domain name <maltinpolar.com> to create a website with information about different sports, for sport fans and consumers of the trademark MALTIN POLAR, since the trademark MALTIN POLAR sponsors the most popular sports in Venezuela (baseball, soccer and basketball) and Internet users will identify the trademark with said sports.

In these emails of September 26, 2002, Respondent stated that his website would benefit Complainant, Respondent and fans, as it would increase the publicity of the trademark MALTIN POLAR, Respondent would have a job as a website designer, and fans would be informed on the National Baseball League. See Complaint, Annex 17.

 

5. Partiesí Contentions

A. Complainantís summarized contentions are as follows:

- The domain name <maltinpolar.com> is identical to the worldwide registered trademark MALTIN POLAR, in which Complainant has legitimate rights. The respondent entirely reproduced the trademark of the Complainant in its domain name. Plus, the suffix ".com" is considered a generic term that does not provide distinctiveness to the domain name.

- Respondent has no right or legitimate interest in respect of the domain name. Complainant has legitimate rights over the trademark MALTIN POLAR, and the trademark owner has not given to Respondent any license to use the trademark. Respondent has published on its website "www.maltinpolar.com" the trademark MALTIN POLAR without authorization.

- The domain name was registered and is being used in bad faith. When Respondent acquired the domain name, he redirected the domain name <maltinpolar.com> to Complainantís official website of MALTIN POLAR products "http://www.maltinpolar.ve". This action evidences that when Respondent registered the domain name at issue he knew or should have known of the existence of the trademark MALTIN POLAR and had knowledge of the official website of the trademark MALTIN POLAR. Following this action, a Representative of Complainant contacted Respondent and requested him to eliminate the redirection of the domain name <maltinpolar.com> to the official website of MALTIN POLAR. Following this request, on October 9, 2002, Respondent constructed his domain name website with polar bears and the trademark MALTIN POLAR was published on the website without any license being granted to that effect. Later, Respondent modified his website and Respondentís new website design was related to the National Baseball League 2002-2003 Season. The Respondentís website was composed of different links: schedule of games, news about baseball, teams, principal leaders and all matters related to the baseball cup. In addition, the basic colors of Respondentís website are blue and yellow. The colors of the registered trademark MALTIN POLAR are blue and yellow, as evidenced on the printout of Complainant website. Later on, Respondent used the domain name for the development of a website whereby Respondent used Complainantís trademark MALTIN POLAR with baseball elements misleading Internet users into thinking that such website was promoted, sponsored and managed by Complainant and taking advantage of Complainantís well known trademark and goodwill. The foregoing is evidence that Respondent has registered in bad faith the domain name to which this Complaint relates, in accordance with Paragraph 4(b)(iv) of the Policy.

- The said e-mail is evidence that Respondent had knowledge of the trademark MALTIN POLAR and of the association existing between sports and the trademark MALTIN POLAR. Therefore, Respondent in bad faith registered the domain name <maltinpolar.com>, to force Complainant to give him a job as a web designer, with the advantage that he would own the domain name to which this Complaint relates.

- Respondent has registered and used in bad faith the domain name to which this Complaint relates.

B. Respondent

The Respondent did not reply to the Complainantís contentions, and is therefore in default.

 

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant as a licensee and because of its direct registrations or applications has rights in the MALTIN POLAR trademarks, covering non-alcoholic beverages, and on many MALTIN trademark registrations or applications used in association with "Polar", the distinctive part of Complainantís corporate name. The Panel finds that the <maltinpolar.com> domain name, is identical or, given the absence of the space between the words MALTIN and POLAR, at least confusingly similar to the MALTIN POLAR trademark. It is common knowledge that in a domain name registration spaces cannot be registered as such, and that they usually are deleted or reflected by means of hyphenation.

Thus the requisite of the Policy, Paragraph 4(a)(i) is met.

B. Rights or Legitimate Interests

As evidenced by Complainant, Respondent published on its website "www.maltinpolar.com" the trademark MALTIN POLAR without Complainantís authorization. There is no relationship between the Complainant and the Respondent which would give rise to any license, authorization, consent or permission to Respondent to use the trademark MALTIN POLAR as incorporated in the domain name or to apply for registration of the domain name. There is no business or commercial relationship of any kind between Complainant and Respondent. Respondent (whether as an individual, business or other organization) has never been commonly known by the domain name. Respondent has no business in connection with the word MALTIN POLAR. Respondent does not directly or indirectly manufacture any products under the mark MALTIN POLAR. Respondentís past use of the domain name appears to have been intended to exploit and take advantage of Complainant's MALTIN POLAR trademark, rather than using it in a bona fide offering of goods or services or a legitimate noncommercial use without intent for commercial gain.

Respondentís default and lack of any submission in this proceeding lead the Panel to conclude that Complainants contentions are true, and that Respondent does not have any rights or legitimate interests in the domain name at issue. The requisite of the Policy, Paragraph 4(a)(ii) is thus met.

C. Registered and Used in Bad Faith

Respondentís contacts with Complainantís representatives whether personally, by phone and by email, as described in section 4 supra, and evidenced by Complainant by presenting the email texts, show that the <maltinpolar.com> domain name was registered primarily with the purpose of illegitimately obtaining a profit from Complainant, whether by renting the domain name to Complainant or by allowing Complainant to use the domain name subject to Complainantís hiring of Respondent as a web designer or webmaster, while he would be keeping the domain name without transferring it to Complainant . Either of such purposes contain the element of personal profit for a value in a transaction with Complainant well exceeding Respondentís documented out-of-pocket expenses in connection with the domain name registration. According to the Policy, Paragraph 4(b)(i) this is a circumstance of bad faith registration.

Furthermore Respondentís unauthorized use of the domain name on its website located at "http://www.maltinpolar.com", by trying to attract Internet users who were looking for Complainantís mark, and by presenting them the mark MALTIN POLAR and various other images connected with sports sponsored by Complainant, was aiming at provoking confusion with Complainantís business activities and Complainantís mark, and misleading Internet users into thinking that such website was promoted, sponsored or managed by Complainant, taking advantage of Complainantís trademark and goodwill. This use was also connected with Respondentís intention to show Complainant that he was able to use Complainantís brands and sports sponsorship for the purpose of obtaining profit from Complainant. In connection with Respondentís offer to rent the domain name and/or to be hired by Complainant as a web designer this is a bad faith use of the domain name, as described in the Policy, Paragraphs 4(b)(i) and 4(b)(iv).

For all this the Panel finds that the domain name was registered and is being used in bad faith (Policy, Paragraph 4(a)(iii))

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <maltinpolar.com> be transferred to the Complainant.

 


 

Roberto A. Bianchi
Sole Panelist

Date: September 3, 2003