WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cortefiel, S.A. v. Javier García Quintas
Case No. D2000-0141
1. The Parties
The Complainant is Cortefiel, S.A., a corporation with legal head office in Avenida del Llano Castellano 51, Madrid 28034, Spain (the "Complainant"), represented by Verónica Palau Hunziker and Amadeu Abril i Abril, on behalf and in the name of Nominalia Internet SL, Barcelona, Spain.
The Respondent is Mr. Javier García Quintas, an individual resident in Playa del Inglés, Gran Canaria, Spain (the "Respondent").
2. The Domain Name and Registrar
The domain name at issue is cortefiel.com, registered with register.com, Inc., a corporation with head office at 575 8th Avenue, 11th Floor, New York, NY 10018, United States of America (the "Registrar").
3. Procedural History
On March 8, 2000, a Complaint dated March 8, 2000, in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (the "Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules") was submitted by e-mail to the WIPO Arbitration and Mediation Center (the "Center").
On March 14, 2000, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding in Case No. D2000-0141 to the Respondent. The Center established April 2, 2000, as deadline for the submission of a Response to the WIPO Center and the Complainant.
The Notification of Complaint included following paragraph:
"6. Default. If your Response is not sent by the above date or we have not received any required payment from you by that date, you will be considered in default. We will still appoint an Administrative Panel to review the facts of the dispute and to decide the case. The Administrative Panel will not be required to consider a late-filed Response, but will have the discretion to decide whether to do so and, as provided for by Rules, Paragraph 14, may draw such inferences from your default as it considers appropriate. There are other consequences of a default, including no obligation on our part to consider any designations you have made concerning the appointment of the Administrative Panel or to observe any guidelines you have provided concerning case-related communications."
On March 21, 2000, the Registrar confirmed to the WIPO Center that the domain name at issue was registered through Register.com, Inc., that Javier García Quintas is the current registrant, and that the domain name is active.
On April 3, 2000, the Center sent a Notification of Respondent Default to the Parties by e-mail.
After having received Roberto A. Bianchi´s Statement of Acceptance and Declaration of Impartiality and Independence, the Center appointed him as a Sole Panelist. The decision date was scheduled for April 25, 2000. Thus, the Administrative Panel finds that it has been properly constituted.
The Panel sharing the assessment of the Center, independently finds that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules, and that payment of the fees was properly made. The Panel finds that the Center has discharged its responsibilities at trying to notify the Complaint to the Respondent pursuant to Rules, paragraph 2(a), and that the Notification of Respondent Default was also properly notified.
There were no extensions granted nor orders issued.
The registration agreement for the domain name at issue has been done and executed in English by Respondent-Registrant Javier García Quintas and the Registrar. The Complainant has submitted its Complaint without any observation. Seeing the Panel no special circumstances to determine otherwise, as provided in Rule paragraph 11, the language of this proceeding is English.
After Complainant´s assertions, supported by the documents enclosed as annexures and undisputed by Respondent – because of its default - the Panel finds that the Complainant owns the following trademarks registered in Spain:
|
Number |
Concession date |
Name |
Class |
|
40135 |
February 24, 1954 |
Cortefiel |
Registered to sell all kind of clothes, wearing and present articles. |
|
54217 |
January 29, 1960 |
Cortefiel |
Registered to sell all kind of clothes, wearing and present articles. |
|
57636 |
May 18, 1961 |
Cortefiel |
Registered to sell all kind of clothes, wearing and present articles. |
|
657919. |
July 13, 1976 |
Cortefiel |
It consists in the denomination "Cortefiel". |
|
866340 |
December 12, 1978 |
Cortefiel |
Class 22. Ropes, strings, nets, shops, awnings, sails, sacks. Fillers. Gross textile fibroid materials. |
|
866341 |
December 12, 1978 |
Cortefiel |
Class 23. Threads and crochet Wool |
|
866342 |
June 5, 1979 |
Cortefiel |
Class 24. Weaves, bedspreads and runners, textile articles. |
|
866343 |
December 20, 1978 |
Cortefiel |
Class 26. Fine laces and embroidered. Buttons, automatics, clasps, eyelets, pins and needles. Artificial flowers |
|
866344 |
December 20, 1978 |
Cortefiel |
Class 27. Carpet, plushys, mattings, linoleum, and other products to cover floors; Tapestry making ( fabric tapestry not included). |
"Cortefiel" is also registered by the Complainant as a mark in Argentina, Brazil, Chile, Cyprus, the United States of America, Greece, India, the United Kingdom, Israel, Japan, Mexico, Norway, Paraguay, Uruguay, Poland, the Dominican Republic, Turkey, Venezuela, Singapore and Andorra. Registrations include those done under the Madrid Agreement and Protocol and the Community Trademark.
Other Complainant´s registrations are in countries where the International and Community trademark has an exclusivity right acquired by the registration of the mark: Austria, Belgium, Benelux, Switzerland, Sweden, Denmark, France, Croatia, Hungary, Italy, Liechtenstein, Morocco, Monaco, the Macedonian Republic, Romania, Slovakia, Vietnam, Yugoslavia, San Marino, Spain, Italy, the United Kingdom, France, Austria. Sweden, Finland, Denmark, Germany, Greece, Luxembourg, The Netherlands, Ireland, and Portugal.
After the Complainant´s assertions – uncontended by Respondent because of its default – and the confirmation sent by the Registrar to the WIPO Center, it has been demonstrated that the domain name at issue cortefiel.com has been registered by the Respondent with register.com, Inc.
5. Parties’ Contentions
5.1 Complainant
The Complainant asserts that:
• The domain name at issue is identical to the trademark in which the Complainant has rights; and the Respondent has no rights or legitimate interests in respect of the domain name; and the domain name was registered and is being used in bad faith.
• The Complainant’s trade name, matching all the CORTEFIEL trademarks listed, identifies a famous and/or renowned brand of clothing/fashion shops all over Spain. The Cortefiel name and stores are widely advertised through newspapers, radio stations and TV channels, both locally and nationally. Cortefiel is in fact a very famous trademark in Spain. Most Spaniards would immediately identify the "Cortefiel" brand and relate it to the Complainant. The Complainant has vigorously defended its intellectual property rights in all trademark classes, with complete success. There is no other individual or corporation than the complainant holding trademark rights on Cortefiel in Spain and abroad, and certainly not the Respondent.
• There is no doubt about the lack of any legitimate intellectual property right of the Defendant to those names, and clear proof of the Defendant’s bad faith in registering and using both domain name (para 3(c) of the Policy).
• The Respondent lives in Spain and is most probably a Spanish citizen. He lives therefore within the geographical area where Cortefiel is a well known and renown trademark and Cortefiel products and stores are widely publicized in the media and present in the market, as they are indeed in the Respondent’s province of residence. There has been investment made by the Cortefiel Group in defending and advertising the mark. The group has been undertaking advertising since 1954 when it first registered the name Cortefiel.
• The domain name was registered in bad faith (these allegations are considered by the Panel under 6.5. below).
• The domain name was and is being used in bad faith (these allegations are considered by the Panel under 6.6. below).
• The Complainant requests the Administrative Panel issue a decision that the contested domain name must be transferred to the Complainant.
• The Complainant agrees to submit, only with respect to any challenge that may be made by Respondent to a decision by the Administrative Panel to transfer or cancel the domain name that is the subject of this Complaint, to the jurisdiction of the courts in Gran Canaria, Spain.
• The Complainant is filing a separate complaint in relation with the domain name cortefiel.org. The defendant in this other case seems to be a different person, even if he shares both family names with the Defendant in this case. More significantly, all the details in the Whois database are identical for both domain name registrations: address; e-mail; telephone number; contacts; nameservers, etc. While the Complainant is not in a position to tell whether both Defendants, Javier García Quintas and Miguel García Quintas, are in fact the same person or brothers, it is perfectly evident that both cases are at very least closely related. The Complainant asks that both cases, if not consolidated into a single one (at least until the identity or name of both registrants could be ascertained) and both Complaints be handled by the same Administrator and the same Panelist.
5.2 Respondent
The Respondent has not submitted a response, is therefore in default and, after the Notification of Respondent Default, has not made any submissions whatsoever.
6. Discussion and Findings
6.1 Effects of Respondent Default
The specific allegations and contentions of the Complainant against the domain name registration bound the Respondent to respond specifically. According with Rules paragraph 5(b)(i) "(t)he response shall (...) (r)respond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain-name holder) to retain registration and use of the disputed domain name (...)".
In case of a default, under Rules paragraph 14 (a), the Panel "shall proceed to a decision on the complaint", and under paragraph 14(b) the Panel " shall draw such inferences therefrom as it considers appropriate".
Thus, the Respondents default would indicate that the Complainant´s assertions are sufficient ground for the Panel to proceed to a default decision in its favor. However such automatic consequence is qualified under the Policy, because "the complainant must prove that each of these three elements are present". Policy, paragraph 4(a) in fine.
6.2 Independent Connection with the Respondents Web Site
As concluded in Case D2000-0076 the Panel considers that its powers under Paragraph 10(a) of the Rules allow the Panel to independently visit the Internet in order to obtain additional light in this default proceeding.
On April 24, 2000, the Panel visited the www.cortefiel.com web site of the Respondent. The connection resulted in a blank screen.
No other screen was available at the Respondent's web site.
6.3 Identity or Confusing Similarity
The Panel has considered the allegation by the Complainant as to the identity of the domain name at issue with the Complainant´s trademark CORTEFIEL. These allegations have not been contested by the Respondent because of its default.
The Panel has compared the domain name at issue with the Complainant´s trademarks CORTEFIEL, and finds that that the second level domain name cortefiel is identical letter-by-letter to the Complainant trademarks, and that the addition of ".com" – a generic top level domain intended for commercial organizations - makes it confusingly similar to such trademarks.
6.4 Rights and Legitimate Interests in the Domain Name
The Panel has considered the allegation by the Complainant as to the lack of rights or legitimate interests of the Respondent in respect of the domain name at issue. In particular, the Panel has considered the Complainant´s contention about the lack of any legitimate intellectual property right of the Respondent to the domain name. These allegations have not been contested by the Respondent because of its default.
The fact that CORTEFIEL is a famous or well known mark in Spain is also uncontended. In the present default proceeding there is no contention on record in favor of the Respondent, and particularly that it might have rights to or legitimate interests in the domain name. No circumstance has been evidenced that could reasonably support such an inference pursuant to the Policy, paragraph 4(c).
Additionally the result of the connection independently conducted by the Panel did not show any evidence as to the rights or the legitimacy of the interests of the Respondent in the domain name. See 6.2 above.
Therefore, the Panel finds that the Respondent has no rights to or legitimate interests in the domain name at issue.
6.5 Registration in Bad Faith
The Respondent lives in Spain and is most probably a Spanish citizen. He lives therefore within the geographical area where Cortefiel is a famous mark and Cortefiel products and stores are widely publicized in the media and present in the market, as they are indeed in the Respondent’s province of residence. This was asserted by Complainant and ran undisputed by Respondent. This leads the Panel to conclude that the Respondent must know and most likely knows about the products, services of the Complainant, and its fame on the Spanish market.
The Complainant contends further that the intent of the Respondent in registering the domain name was reselling or perhaps renting it to the Complainant. When the Complainant discovered that the domain name, previously registered by a well-known domain name warehousing company appeared now to be registered at the Respondent's name, a notarized letter was sent informing the Respondent of the legitimate rights of the Complainant to the domain name, and asking him to perform the transfer of such domain. Such notarized letter was never answered in writing. In a telephone conversation with Complainant’s trademark Attorneys (Clarke Modet & Co.) the Respondent informed that he had no intention to sell the domain, but that he was nevertheless "open to discussions". No further negotiation was engaged. The Respondent was clever enough not to send any written statement regarding his position.
Although the fact of default would authorize the Panel to immediate conclude that the purpose of the Respondent's registration was to sell or rent the domain name, the fact that the Complainant does not mention any precise offer by Respondent, and specifically that Complainant does not contend that any precise sum for the transfer of rights in the domain name was asked by Respondent, leads the Panel to conclude that the presence of the circumstance described in the Policy Paragraph 4(b)(i) was not demonstrated by Complainant.
Nevertheless, the Policy Paragraph 4(b)(ii) allows a Panel to determine that bad faith registration is present if such registration was made to prevent the trademark owner to reflect its trademark or service mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct. The Panel considers that the lack of response to the notarized letter sent by Complainant is a "pattern of such conduct", which authorizes the Panel to conclude that the domain name registration was made in bad faith.
The Panel further notes the time sequence of the registration of the domain name cortefiel.org by Miguel García Quintas (January 4, 2000) after the Respondent in the Complaint regarding cortefiel.com received the notarized letter. This was interpreted by this Panelist in WIPO Case No. D2000-0140 as a move to create an obstacle for the Complainant wishing to reflect its marks in a corresponding domain name, and as an additional bad faith element in registration of the cortefiel.org domain name. A similar conclusion follows from the fact that the second registration would have most likely not taken place, had not the Respondent been acting in concert with the second, related registrant.
The fact that the registrants of cortefiel.com and cortefiel.org are seemingly two different persons cannot be an obstacle for piercing the veil of an apparent intent of concerted action among the registrants, to establish the appearance of mutual independence when the scheme to register in bad faith is perceivable. Both family names are identical. The postal address is identical, and the e-mail of Miguel Garcia Quintas in his registration is gjavier@TELELINE.ES. Mr. Javier García Quintas shares mail, email and phone number with Miguel García Quintas. All DNS required contact details are identical. The Panel concludes that the Complainant is right when it asserts that there is a single mind and a single intent behind both registrations.
The Complainant asserts that the Respondent performed an additional registration of the Cortefiel name under the ".org" top level domain "using a strawman, or simply a fake". Absent any Respondent's contentions – by its default - as to its rights or legitimate interests in the domain name, the Panel cannot believe in "miraculous coincidences" in respect of Whois identical data and contact details, nor in a lack of concert of very closely time-related domain name registrations (cortefiel.org and cortefiel.com). Therefore the Panel concludes that the Complainant´s assertion that it suffered a well-established pattern of conduct aimed at preventing the legitimate owner of the trademark from reflecting it in a corresponding domain name, is true.
Furthermore, the Complainant contends that the Respondent has apparently registered a number of domain names that are identical to well-known Spanish marks belonging to third parties. The Complainant asserts that the Respondent has acknowledged such registrations in the course of a phone call with the Complainant´s trademark attorney. In absence of any statement by the Respondent – by its default – the Panel considers that the contention of the Complainant has to be accepted by the Panel as true. Accordingly, the Panel considers that the circumstance of having registered other domain names identical to third parties' trademarks or tradenames, without any indication of rights or legitimate interests thereto, is a further showing of bad faith registration.
For the foregoing reasons, the Panel finds that the domain name cortefiel.com has been registered in bad faith by the Respondent.
6.6 Use in Bad Faith
The Complainant asserts that "in fact, there is no use of the domain names", and that "the only use the Respondent is doing in relation with cortefiel.com is preventing the Complainant from making a legitimate use of it, and trying to force the Complainant into a transfer-for-price negotiation". These assertions very much complicate the issue of establishing bad faith use as a requisite of the Policy, which must be found independently from bad faith registration.
However the Complainant gives an important clue when it contends that the relative issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith, that using in bad faith is not limited to positive action, and that inaction is within the concept.
As seen in the result of the Panel's independent visit to the Respondent's web site, by allowing his page to remain empty after the Complainants communications, the Respondent's is omitting any reference to a bona fide use of the domain name, and is confusing Web surfers or prospective customers of Cortefiel by depriving them of any indication that it has no relationship whatsoever to a Complainant´s site or to Complainant´s marks or activities, being the CORTEFIEL mark famous, renowned or well known in the Spanish market.
Additionally the Panel considers that the fact that the instant case relates to a ".com" domain name contributes to the likelihood of confusion amongst the Web surfers looking for the site of the Complainant, a corporation with commercial purposes. This is a circumstance of bad faith use as described in the Policy, paragraph 4(b), even if such conduct does not exactly fits within the description of Policy Paragraph 4(b)(iv) because of the purpose of "commercial gain" cannot be established from an empty site or page.
For the above reasons, the Panel finds that the domain name at issue has been and is being used in bad faith.
7. Decision
The Panel has found that the domain name cortefiel.com is identical or confusingly similar to the trademarks of the Complainant, and that the Respondent has no rights to or legitimate interests in said domain name. The Panel has further found that the domain name has been registered in bad faith, and that it has been and is being used in bad faith.
Therefore, pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Administrative Panel decides to request that the domain name cortefiel.com be transferred to the Complainant Cortefiel, S.A.
Roberto A. Bianchi
Sole Panelist
April 24, 2000