WIPO Domain Name Decision: D2007-1298

WIPO

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sanutri AG v. Juan Antonio Castro Ganaza

Case No. D2007-1298

1. The Parties

The Complainant is Sanutri AG, of Bern Liebefeld, Switzerland, represented by Bérangère Boyer, France.

The Respondent is Juan Antonio Castro Ganaza, of Cadiz, Spain.

2. The Domain Name and Registrar

The disputed domain name <dietisa.com> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 31, 2007. On August 31, 2007, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On September 4, 2007, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 September 12, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 2, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 5, 2007.

The Center appointed John Lambert as the sole panelist in this matter on October 10, 2007. 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 public company (“Aktiengesellschaft”) incorporated in Switzerland. It has a number of subsidiaries which supply a wide range of health foods, beauty and healthcare products to supermarkets, hypermarkets, chemists and other retail outlets throughout Europe under several well known brands including Gerblé, Céréal and Milical.

One of those subsidiaries is a private company (“Sociedad Limitada”) incorporated with limited liability in Spain in the name of Dietisa SL. Dietisa SL is the registered proprietor of several Spanish trademarks:

Date

Number

Mark

Class

Goods

June 22, 1992

1,798,769

Device consisting of the word DIETISA in an oval background

30a

Coffee, tea, cocoa. Sugar, rice, tapioca and other foodstuffs

1,708,768

29a

Meat, fish, meat extracts, preserved fruit and vegetables and other conserves

1,708,767

5

Pharmaceutical products, dietetic substances for medical use, baby food and other healthcare preparations

October 1, 1999

223238

DIETISA, SL

1 to 42

Development, manufacture, trade, distribution, export and import of all classes of medicines, special foodstuffs, dietetic and sanitary products, cosmetics and personal hygiene products etc.

Dietisa SL markets a wide range of medical preparations, beverages, health foods, cosmetics and food supplements under that mark. Its current catalogue and price list run to nearly 20 pages.

Very little is known of the Respondent beyond his name and contact details. He has not communicated with the Center but he has written to the Dietisa SL. He answered the Complainant’s letter of claim of July 19, 2007, with a short letter to the “Director” of Dietisa postmarked August 1, 2007, containing the following words and a telephone number:

“If it is interested in the name “dietisa.com” calls me” (sic).

According to the “Whois” search that has been lodged by the Complainant, the disputed domain name was first registered as long ago as May 8, 2000. No website appeared when the Panel entered “www.dietisa.com” into his browser at 08:20 British time on October 23, 2007, but a search of the “Wayback Machine” internet archive at “www.archive.org” reveals that there was a website at that URL between January 3, 2002 and March 17, 2004. That website was headed with the words “Desventura de un Navegante” (“navigation error”) accompanied by an animation of an ancient galley bobbing through waves and followed by a few paragraphs about a boat together with an anonymous email address and a telephone number.

The Complainant’s use of the DIETISA mark as a domain name is very much more recent and hardly more substantial. According to a “Whois” search of the Spanish domain space at “www.nic.es”, the Complainant registered <dietisa.es> in the Spanish country code top level domain name space only on July 6, 2007. All it has uploaded to that URL is a holding page announcing in French rather than Spanish that the domain name <dietisa.es> has been reserved through Sanutri AG (“Bienvenue sur www.dietisa.es Nom de domaine réservé par l’intermédiaire de SANTURI AG”).

5. Parties’ Contentions

A. Complainant

The Complainant claims the transfer of the disputed domain name for the following reasons. It says that it owns the above-mentioned Spanish trademarks through its subsidiary Dietisa SL and that it has also registered “dietisa” as a domain name in the Spanish and Portuguese domain names spaces. It submits that the disputed domain name is identical or confusingly similar to those registered trademarks. It alleges that the Respondent has no rights or legitimate interests in such domain name. It relies on the Respondent’s response to its letter of claim mentioned above as evidence that the domain name was registered and is being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires a complainant to prove that:

(i) the disputed 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 interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

In the administrative proceeding, the complainant must prove that each of those three elements is present.

A. Identical or Confusingly Similar

There is no doubt that the disputed domain name is confusingly similar to the above-mentioned Spanish registered trademarks. The only question in the instant proceedings is whether the Complainant has “rights” in those marks in that they are held by the Complainant’s subsidiary, Dietisa SL, and not by the Complainant.

The question whether a company related to a trademark holder has rights in a trademark under the UDRP is discussed in the “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”. The majority view appears to be that:

“in most circumstances a licensee of a trademark or a related company such as a subsidiary or parent to the registered holder of a mark is considered to have rights in a trademark under the UDRP”.

In Grupo Televisa, S.A. and Others v. Party Night Inc., WIPO Case No. D2003-0796, the marks in question had also been registered by the complainant’s wholly owned subsidiaries. Observing that

“Paragraph 4(a)(i) of the Policy requires, as one element to be proved, that the domain name be identical or confusingly similar to a trademark or service mark in which Complainant has rights. These words do not require that Complainant be the owner of the mark and would include, for example, a licensee of the mark. It has been accepted in several decisions that a company related as subsidiary or parent to the registered holder of a mark may be considered to have rights in the mark.”

The panel concluded in that case that the complainant had “rights” in its subsidiaries’ registered service marks. That panel’s reasoning is respectfully adopted and his decision followed by the Panel in this case.

Accordingly, the Panel finds that the first condition of Paragraph 4(a) of the Policy is satisfied by the Complainant.

B. Rights or Legitimate Interests

As registered proprietor of the marks mentioned above the Complainant’s subsidiary, Dietisa SL is, the Panel understands presumably, entitled to prevent other third parties not having its consent from using in the course of trade in Spain:

a. any sign which is identical with any of those trademarks in relation to goods or services which are identical with those for which the trademarks are registered; and

b. any sign where, because of its identity with, or similarity to, the trademarks and the identity or similarity of the goods or services covered by the trademarks and the sign, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association between the sign and the trademarks

by virtue of art. 5(1) of the Community Trade Mark Directive (First Directive 89/104/EEC of the Council, of December 21, 1988, to Approximate the Laws of the Member States Relating to Trade Marks (OJ EC No L 40 of 11.2.1989, p. 1)). It may be inferred from the Complainant’s statement that the Respondent has no rights or legitimate interests in the disputed domain name, that neither the Complainant nor its subsidiary has consented to the Respondent’s use of its registered trademarks and that it is aware of no rights under Spanish law, the Policy or otherwise that would entitle the Respondent to use the disputed domain name. This case was put to the Respondent in the letter of claim of July 19, 2007 and has never been challenged, and the Respondent has chosen to submit no response in the current proceedings.

In the circumstances, the Panel finds that the second condition of Paragraph 4(a) of the Policy is satisfied by the Complainant.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that a number of circumstances shall be evidence of the registration and use of a domain name in bad faith for the purposes of Paragraph 4(a)(iii). They include circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name (Paragraph 4(b)(i)).

The Complainant and its subsidiary companies carry on a very substantial business throughout Europe. They market their goods under a number of well known brands many of which are registered as international and Community trademarks. Although the DIETISA brand may not be so well known outside Spain as some of the group’s other brands, the range of goods in the catalogue and price list mentioned above indicates that DIETISA is very big in Spain.

The domain name was registered in 2000 shortly after Dietisa SL had registered the trademarks mentioned above but hardly any use has been made of that registration. The most likely reason for placing an email address and telephone number at the end of a short article about nothing much in particular on the website that appeared between January 3, 2002 and March 17, 2004, is to hint that an approach from Dietisa SL or indeed one of its competitor or indeed any other third party would not be unwelcome.

Finally, the response to the letter of claim was not a denial of the Complainant’s case or but an invitation to call the Respondent “if it [was] interested in the domain name <dietisa.com>”.

The obvious inference is that the Respondent thought that the domain name might have some value to Dietisa SL or some other party. While he was astute enough not to make a ransom demand which would have placed him full square within Paragraph 4(b)(i) he dropped hints that he was open to offers in his reply to the letter of claim as well as on the website that appeared between January 3, 2002 and March 17, 2004.

These are “circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs” and, consequently, evidence of registration and use in bad faith.

The Panel finds that the third condition of Paragraph 4(a) of the Policy is therefore satisfied by the Complainant.

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, <dietisa.com> be transferred to the Complainant.

John Lambert
Sole Panelist

Dated: October 23, 2007

Date	Number	Mark	Class	Goods
June 22, 1992	1,798,769	Device consisting of the word DIETISA in an oval background	30a	Coffee, tea, cocoa. Sugar, rice, tapioca and other foodstuffs
	1,708,768		29a	Meat, fish, meat extracts, preserved fruit and vegetables and other conserves
	1,708,767		5	Pharmaceutical products, dietetic substances for medical use, baby food and other healthcare preparations
October 1, 1999	223238	DIETISA, SL	1 to 42	Development, manufacture, trade, distribution, export and import of all classes of medicines, special foodstuffs, dietetic and sanitary products, cosmetics and personal hygiene products etc.