WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Generalitat de Catalunya v. Thomas Wolf, Wolf Domains
Case No. D2002-1124
1. The Parties
The Complainant is Generalitat de Catalunya, Palau de la Generalitat, Plaça Sant Jaume, nº 4 E-08002, of Spain, represented by Messrs. Antonio Raposo Grau and Amadeu Abril Abril of Spain.
The Respondent is Thomas Wolf, Wolf Domains, 452 Shoal Bay suite B, The Valley, 569, Anguilla, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Names and Registrar
The disputed domain names <gencat.info> and<generalitatdecatalunya.info> are registered with Go Daddy Software, Inc. of Scottsdale, Arizona, USA.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 9, 2002 (electronic version), and December 11, 2002 (hardcopy). The Center acknowledged receipt of the Complaint on December 11, 2002. On the same date, December 11, 2002, the Center transmitted by email to Go Daddy Software, Inc. a request for registrar verification in connection with the domain names at issue. On December 11, 2002, Go Daddy Software, Inc. 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. In response to a notification by the Center that the language of the proceedings is English, the Complainant filed a translation of and an amendment to the Complaint on December 20, 2003. On January 3, 2003, the Center sent a new communication to the Complainant, acknowledging receipt of the foregoing amendment and pointing out some deficiencies thereof, thus requesting the Complainant to amend such deficiencies. On January 7, 2003, Complainant submitted an amendment to the Complaint. The Center verified that the Complaint together with the amendments to 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 January 17, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was February 6, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 7, 2003.
The Center appointed Kiyoshi I. Tsuru as the Sole Panelist in this matter on February 17, 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.
On March 17, 2003, the Panel issued Procedural Order No. 1, thereby requiring Complainant to produce the following documents and information:
1. Documents that constitute evidence showing that the name GENERALITAT DE CATALUNYA has been effectively used as a trademark, i.e., as an identifier of products or services in the market, placing care in showing that GENERALITAT DE CATALUNYA has acquired sufficient distinctiveness in relation to such products or services. The following are a few non-exclusive examples of materials and information that could constitute evidence of use of the name GENERALITAT DE CATALUNYA as a trademark:
· Documents showing that Complainant renders services, such as providing public information, under the name GENERALITAT DE CATALUNYA.
· Documents showing that Complainant sells goods under the name GENERALITAT DE CATALUNYA.
2. Documents and information showing that the name GENERALITAT DE CATALUNYA constitutes a well-known trademark. Considering that Article 34, Fraction 5 of the Spanish Trademark Law in force establishes that the user of an unregistered well-known trademark may have the same rights as the owner of a registered mark, Complainant is hereby required to produce evidence showing that GENERALITAT DE CATALUNYA is a well-known trade-mark, so as to ascertain a right equivalent to that derived from registration.
The deadline for submitting a response to this official action was March 24, 2003.
On March 19, 2003, Complainant requested an extension of the above mentioned term, in order to gather the required evidence. The Panel accepted to grant the said extension, setting April 2, 2003, as new deadline for submitting such evidence. The response was filed on time and is being considered in this decision.
4. Factual Background
The Panel finds that the following facts appear from the Complaint and documents submitted with the Complaint and have not been disputed by the Respondent (seeRandstad General Partner (U.S.), LLC v. Domains For Sale For You, WIPO Case No. D2000-0051, March 24, 2000).
· Complainant has provided evidence showing the existence of the following trademark registrations:
- Spanish trade mark No 2 064 260 "GENCAT", granted on June 5, 1997, for goods in Class 9 of the International Catalogue of Names.
- Spanish trade mark No 2 064 261 "GENCAT", granted on June 5, 1997, for goods in Class 16 of the International Catalogue of Names.
- Spanish trade mark No 2 064 262 "GENCAT", granted on December 22, 1997, for goods in Class 38 of the International Catalogue of Names.
- Spanish trade mark No 2 064 263/6 "GENCAT", granted on December 22, 1997, for goods in Class 42 of the International Catalogue of Names.
· Complainant is the Government of the Autonomous Community of Catalonia. The Autonomous Community of Catalonia forms part of the Territorial Organization of the Spanish State in accordance with article 137 of the Spanish Constitution, and is recognized and governed by the Statute of Autonomy of Catalonia, approved by the Spanish Organic Law 4/1979.
· Complainant is the holder of domain names registrations <gencat.com>, <gencat.net>, <gencat.org> <gencat.es>
· The contested domain names were registered on the following dates:
- <gencat.info>, October 2, 2001
- <generalitatdecatalunya.info>, September 13, 2001
5. Parties’ Contentions
Complainant claims to be the owner of the trademarks GENCAT and therefore alleges that an identity or similarity occurs which produces incompatibility between Complainant’s registered trademarks and the domain name <gencat.info>.
Complainant also states that the Gencat trade mark is clearly an abbreviation from the words "Generalitat" and "Catalunya", so that the trademark is also almost identical with the domain name <generalitatdecatalunya.info>, while identity is total with the name of the Government of the Autonomous Community of Catalonia.
Complainant mentions that the unquestionable reputation of the trademarks and name on which its Complaint is founded has been recognized by the Center in Generalitat de Catalunya v. General de Catálogos,WIPO Case No. D2002-0525, August 6, 2002, and cites the Panel that decided such case: "The Complainant is the Government of the Autonomous Community of Catalonia (...). The Complainant’s name is historic, since it has been used for seven hundred years to identify the executive organisation created by the General Parliament of the Confederation of the Catalonia-Aragon Crown. In any event, it is the name used in the Statute of Autonomy of Catalonia, approved by the Spanish Organic Law 4/1979, of 18 December."
Complainant argues that the registration of a domain name coincident with a trade mark belonging to another means an infringement of the sole and exclusive rights of the owner of the trade mark and that said infringement is all the greater if the trade mark appropriated is a well-known trade mark, as is the case of GENCAT.
Respondent’s lack of rights or legitimate interests in respect of the domain name
Complainant asserts that the current owner of the domain name does not have title to the registered trademark GENCAT and that such name is not identified with a company, product or service by which the owner of the domain can be known, so that he has no legitimate right or interest to use the name GENCAT when identifying goods or services offered. Complainant argues that the Respondent clearly is not identified with the name "Generalitat de Catalunya".
Complainant argues that the registrant of the disputed domain names knew of the existence of the Portal and trademarks property of the GENERALITAT OF CATALONIA, and that this fact constitutes evidence that the registration of <gencat.info> is not the product of chance, that the registrant knew that beneath the name Gencat laid the Government of Catalonia.
Complainant states that it is not conceivable that the Respondent could be known by the domain name <generalitatdecatalunya.info>, for this name is closely related to the GENERALITAT OF CATALONIA, a public entity whose name cannot be appropriated by anyone.
Complainant alleges that the disputed domain name <gencat.info> is linked to the web page "http://www.gamma-burst.com/gencat/," wherein a product called Gencat is offered, but that the registrant for the domain name <gamma-burst.com> is not the Respondent. Complainant concludes that this constitutes evidence showing that Respondent has not made demonstrable preparations to use the domain name <gencat.info> in relation with an offer of goods or services in good faith and that Respondent has limited his activity to redirecting the domain name to a website where a product is offered.
Bad faith registration and use
Complainant asserts that the disputed domain names were registered unscrupulously and for the purpose of making undue use of them on the net, seeking to confuse the user who seeks information from the GENERALITAT OF CATALONIA, or with the purpose of benefiting from the sale or assignment thereof to their legitimate owner or any third party.
Complainant argues that the contact information supplied by the Respondent is misleading or false, that according to a WHOIS query dated October 21, 2002, the owner of the disputed domains was A.LOPEZ, but that these contact details changed later on (the Registrant is currently listed as Thomas Wolf, Wolf Domains). Complainant asserts that A.Lopez has been identified as Respondent in another case, Banco Vitalicio de España, Compañía de Seguro y Reaseguros, S.A. v. A. López, WIPO Case No: D2002-0948, November 26, 2002, wherein the Panel recognized Respondent as a Spanish national. Complainant states that Respondent, following a tactic of distraction, changed the details of the domains names that are being disputed in this case, in order to hide himself under the name of another owner, and presumably with the intention that this fact could be of benefit to him, in his certain aim of benefiting from the sale of these domains to their legitimate owner.
Complainant states that false contact information, under certain circumstances, may constitute evidence of bad faith and cites Ceyx Technologies v. Ceyx.Com, WIPO Case No. D2001-0681, July 9, 2001. Complainant also cites Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, February 20, 2000, and analogizes such case to the one at hand, in that Respondent has adopted deliberate measures to ensure that his true identity could not be determined, or so that there could be no communication, and therefore has registered the domain name unscrupulously.
Complainant considers that in no way can it be credible that the choice of the domain names <gencat.info> and <generalitatdecatalunya.info> and their registration is an accidental and casual act, especially in the case of the registration <eneralitatdecatalunya.info>.
Complainant further states that Respondent’s unscrupulousness is confirmed by a phrase comprised in the page to which the disputed domain name <gencat.info> resolves, which reads: Link to us: Make $$$.
According to Complainant, Respondent is aware that users looking for the GENERALITAT OF CATALONIA may type <gencat.info>, seeking the services of this public entity. That given the reputation of the trademark GENCAT, this electronic address is likely to be typed by a large number of users. That Respondent would thus derive a financial benefit from this fact, which constitutes unfair competition, i.e., an abusive use of the reputation of another (citing Pans & Company International, S.L. y Pansfood, S.A. v. Eugenio Bonilla García WIPO Case No: D2002-0908, November 25, 2002).
Complainant argues that Respondent’s conduct falls within paragraph 4b)iv) of the Policy in that he is using the domain name <gencat.info> in a way directed to attempting to attract, for financial benefit, users of the Internet to his website or any other site, creating the risk of confusion with Complainant’s trademark GENCAT as to source, sponsorship, affiliation or endorsement.
On the other hand, Complainant states that the domain name <generalitatdecatalunya.info> is inactive, because on typing in this name, the user accesses the Web page of the Registrar of this domain name, i.e., "www.godaddy.com." Complainant alleges that inactivity is sufficient to prove the unscrupulousness of the Respondent and cites Adobe Systems Incorporated v. Domain OZ, WIPO Case No. D2000-0057, March 22, 2000, wherein the relevant Panel ruled that failure to present evidence of legitimate use or of preparation for legitimate use is an example of an abusive registration.
Finally, Complainant cites two other cases where the disputed domain names have involved the word GENCAT to support its assertion that unscrupulous registration is linked to unscrupulous used, based on the deduction that whoever registers a domain name unscrupulously (with knowledge, for example, that it is a well-known trade mark) will use it unscrupulously (with speculative ends, with the intention of impeding or with the intention of benefiting from another’s reputation) unless it can be shown to the contrary (citing Generalitat de Calalunya v. JFO.NET, WIPO Case No. D2002-0524, July 25, 2002; Generalitat de Catalunya v. General de Catálogos, WIPO Case No. D2002-0525, August 6, 2002).
Based on the above, Complainant argues that it can be deducted from Respondent’s acts that his intentions are to transfer the disputed domain name registrations to Complainant, for valuable consideration in excess of his documented out-of-pocket costs directly related to the domain name, in order to obtain financial profit.
II. Procedural Order No. 1
In reaction to Procedural Order No. 1 issued by this Panel, Complainant submitted the following documents to show that the name GENERALITAT DE CATALUNYA has been used as a trademark, and that such name constitutes a well-known trademark:
1.a) The Guide of Services, a publication that contains ALL the services and performances that the Generalitat de Catalunya puts to the disposition of its citizens.
1.b) Brief Guide: Summary of the proceeding guide.
2. MULTIMEDIA: The Key of Catalonia, a CD-Card publication of the Government of Catalunya that contains information about the country and the own Generalitat.
3. ADVERTISEMENTS IN INTERNATIONAL PRESS: The Government of Catalunya has made numerous advertising campaigns in foreign press:
3.a) Ads in THE TIMES.
3.a) Ads in LE MONDE
3.b) Ads in LA REPUBLICA
4. Most recent campaigns relating to services in the local [Catalonian] press.
5. ADVERTISEMENTS relating to exhibitions organized by "Generalitat de Catalunya" in the local Press:
5.a) Ads in EL PERIODICO.
5.b) Ads in EL PAIS.
6. Recruitment campaign for the local Police, also in the local [Catalonian] press.
7. CATALUNYA NOVETATS/CATALUNYA NEWS, a Magazine distributed to every catalonian home, which is sent monthly and gratuitously to the set of citizens of Catalunya in which it inquires into the set of new features in the matter of services that the Government of Catalunya makes available of the citizens.
8. Booklet distributed in a recent Sunday edition of largest local [Catalonian] newspaper.
Respondent did not file a Response to Complainant’s Complaint.
6. Discussion and Findings
In accordance with the Policy, Paragraph 4(a), the Complainant must prove that:
(i) the domain name in question 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 three of these elements are present.
As the Respondent has failed to submit a response to the Complaint, the Panel may accept as true all of the allegations of the Complaint. Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk, WIPO Case No. D2002-0487, August 12, 2002; Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009, February 29, 2000.
A. Identical or Confusingly Similar
The domain name <gencat.info> is identical to Complainant’s trademark GENCAT. The only difference between the former and the latter is the addition of the generic top-level domain (gTLD) ".info" to the contested domain name, which is without legal significance. See CBS Broadcasting Inc. v. Worldwide Webs, Inc.,WIPO Case No. D2000-0834, September 4, 2000. Other Panels have had similar decisions regarding domain names involving the trademark GENCAT: Generalitat de Calalunya v. JFO.NET, WIPO Case No. D2002-0524, July 25, 2002 (stating that the trademarks GENCAT are absolutely identical to the domain name gencat.org); Generalitat de Catalunya v. General de Catálogos, WIPO Case No. D2002-0525, August 6, 2002 (ruling that it is evident that there is an absolute identity between the trademarks GENCAT and the domain name gencat.com).
Complainant has provided sufficient evidence showing that it has trademark rights over the marks GENCAT.
Therefore, the Panel has reached the conclusion that Complainant has proved the first element of the Policy, with regard to <gencat.info>.
The domain name <generalitatdecatalunya.info> is confusingly similar to the name GENERALITAT DE CATALUNYA. The string of characters that forms GENERALITAT DE CATALUNYA is practically the same as that of <generalitatdecatalunya.info>, except for the absence of spaces and the addition of the gTLD ".info" in the latter. The lack of spaces between the words "GENERALITAT", "DE" and "CATALUNYA" are as irrelevant as the presence of the said gTLD ".info." See Ahmanson Land Company v. Vince Curtis, WIPO Case No. D2000-0859, December 4, 2000 (citing in turn Monty and Pat Roberts, Inc. v. J. Bartell,WIPO Case No. D2000-0300, June 13, 2000; J.P. Morgan v. Resource Marketing, WIPO Case No. D2000-0035, March 23, 2000).
The issue is to determine whether Complainant has proved that it has used the said name as a trademark, i.e., as a distinctive sign, a source identifier of goods or services.
Similar cases may shed some light on this matter:
In Skattedirektoratet v. Eivind Nag, WIPO Case No. D2000-1314, December 18, 2000 (regarding <skatteetaten.com>, the Panel ruled the following: The Complainant has no registration of the word "Skatteetaten" as a mark. However, Norwegian Trademark Law also recognizes rights on unregistered marks on the condition that they have acquired distinctiveness through use.[Emphasis added]
In Port of Helsinki v. Paragon International Projects Ltd., WIPO Case No. D2001-0002, February 12, 2001 (regarding <portofhelsinki.com>), the relevant Panel ruled that the present Dispute Resolution Policy applies only to conflicts between on the one hand a trademark or a service mark (Complainant’s) and on the other hand a domain name (Respondent’s).The Policy consequently does not presently apply to, for instance, conflicts between domain names and geographical indications or signs or symbols that are not supported by trademarks/service marks. [Emphasis added].
In City of Hamina v. Paragon International Projects Ltd., WIPO Case No. D2001-0001, March 12, 2001 (regarding <portofhamina.com>), the Panel ruled that the name Port of Hamina may, in itself, be a trademark for services and protected as such, irrespective of trademark registration, if fulfilling the conditions required under Finnish law for the protection of non registered trademarks (service marks). The test applied to distinguish protected trademarks of this kind from those non protectible bears reference to whether the mark, by its use, has acquired distinctiveness so as to distinguish the goods and services of one undertaking from those of other undertakings. [Emphasis added].
The two immediately preceding decisions might seem contradictory, but they establish the same principle: that in order for a geographical name to be protected under the Policy, said name must constitute a trademark by virtue of its use, it must designate source, it must serve to distinguish goods or services in a given market. This conclusion is clearly described in Brisbane City Council v. Warren Bolton Consulting Pty Ltd, WIPO Case No. D2001-0047, May 7, 2001 (regarding <brisbanecity.com>), wherein the Panel stated, inter alia, the following matters:
· It is possible for an action to be brought under the Uniform Policy, in relation to an unregistered word, phrase or string of characters (referred to as "unregistered mark") but only so long as the unregistered mark is a "trademark"
· For the unregistered mark to constitute a "trademark", it must function as a trademark, i.e., the unregistered mark must perform the function of distinguishing the goods or services of one person in trade from the goods or services of any other person in trade.
· In both <portofhelsinki.com> and <portofhamina.com>, the relevant Panels were of the view that the legal authority of a geographical area does not, as a matter of principle, have an exclusive right to the name of that area.
· In both of the above cited cases, the relevant Panels did recognize that, in certain circumstances, the legal authority of a geographical area might, depending on the actual facts, have a trademark right in the name of that area.
· Thus, the important issue in a case concerning an unregistered mark that is a geographical location, is whether the facts of the case show that the unregistered mark is indeed performing the function of a trademark – that is to say, whether the unregistered mark is distinguishing the goods or services of the Complainant in trade from the goods or services of any other person in trade.[Emphasis added throughout the citation].
Thus, according to Brisbane City Council v. Warren Bolton Consulting Pty Ltd, in order to determine whether an unregistered mark relating to a geographical location is protected under the Policy, the applicable test should be whether the unregistered mark has acquired distinctiveness, such as to be able to perform the function of a trademark in relation to the goods or services of the Complainant.
In Sydney Markets Limited v. Nick Rakis trading as Shell Information Systems, WIPO Case No. D2001-0932, October 8, 2001 (regarding sydneymarkets.com>), the Panel said: It is well established that Paragraph 4(a)(i) of the ICANN Policy does not require the Complainant to have registered trademark rights. A Complainant may rely on an unregistered word, phrase or string of characters, provided that the unregistered mark is and performs the function of a "trademark." The unregistered mark must perform the function of distinguishing the goods and services of one person in trade from the goods or services of any other person in trade. [Emphasis added]. The said Panel also pointed out a few issues that are applicable to this case: The panel does not, therefore, consider this to be a dispute regarding a geographical term per se, such as Barcelona, Brisbane or St. Mortiz. This dispute is more akin to prior cases involving domain names that comprises a geographical name followed by a generic word, such as <oshawacenter.com>, <manchesterairport.com> or <wembleystadium.net>. In these cases, even though the contested domain name represented the name of something that existed in the real world (a shopping centre, an airport or a building), what was important was whether or not the Complainant had properly demonstrated that it had trademark rights. [Emphasis added].
In Bundesrepublik Deutschland (Federal Republic of Germany) v. RJG Engineering Inc., WIPO Case No. D2001-1401, January 23, 2002 (regarding <bundesinnenministerium.com>, <bundesinnenministerium.net>, <bundesinnenministerium.org> and <verfassungsschutz.org>.), the Panel concluded that nothing prevents a public authority from being the holder of a trademark right as such an authority would be covered by the word "undertaking" as a designation for those who can be holders of trademark rights provided that it is engaged in activities such as offering of goods or services.[Emphasis added]. There is a similar case involving German Government Agencies, i.e., Bundesrepublik Deutschland (Republic of Germany) v. RJG Engineering Inc./Gerhard Lauck, WIPO Case No D2002-0110, April 9, 2002 (regarding <bundesjustizministerium.com>, <bundesjustizministerium.net>, <bundesjustizministerium.org>, <bundesinnenministerium.biz> and <verfassungsschutz.biz>), wherein the Panel stated that the Complainant in such case had unregistered service and trade mark rights in the marks "bundesjustizministerium", "bundesinnenministerium" and "verfassungsschutz".
In Stadt Heidelberg v. Media Factory, WIPO Case No. D2001-1500, March 6, 2002 (regarding <heidelberg.net>), the relevant Panel expressed the following:
There have been cases in which place names either alone, or in combination with other identifying elements, have been held to constitute trade marks or service marks (see for example WIPO Case D2000-1217, Skipton Building Society v. Peter Colman, WIPO Case D2001-0001, City of Hamina v. Paragon International Projects Ltd, WIPO Case D2001-0932, Sydney Markets Limited v. Nick Rakis, along with several others). None of those cases stands for the proposition that a geographical name per se can be assimilated to a trademark or a service mark. Each of those cases rested upon a showing that by virtue of the activities carried on by the Complainant, the geographical name either with, or without additional matter, had come to denote the goods or service of Complainant, and had acquired the character of a trade mark. [Emphasis added].
This Panel confirms the above prior decisions rendered by other Panels, and decides that the requirement which must be met by Complainant in this case is a showing that the name GENERALITAT DE CATALUNYA performs the function of a trademark, i.e., that it is used as an identifier of products or services in trade, that the said name has acquired distinctiveness.
By means of its reply to Procedural Order No. 1, Complainant has submitted evidence showing that the name GENERALITAT DE CATALUNYA has been used in connection with services such as providing public information. Complainant has filed with the Center the following items: guides, CD-cards, copies of advertisement campaigns in papers like THE TIMES, LE MONDE and LA REPÚBLICA, EL PERIÓDICO and EL PAÍS, copies of an advertisement regarding a recruitment campaign depicted therein, a magazine distributed to Catalonian homes and a Sunday newspaper booklet.
These materials are sufficient to establish that the name GENERALITAT DE CATALUNYA, which is distinctively comprised within the materials submitted by Complainant, performs the function of a trademark, by denoting the information services of Complainant. See Skattedirektoratet v. Eivind Nag, supra: In the context of the information services rendered by the Claimant […], which are offered to everybody interested in information or documentation relating to tax issues, "Skatteetaten" is clearly used as a service mark. See also Sydney Markets Limited v. Nick Rakis trading as Shell Information Systems: The Complainant provided newspaper articles and brochures that used the term "Sydney Markets" to refer to the markets operated by the Complainant. Finally, seealso Bundesrepublik Deutschland (Republic of Germany) v. RJG Engineering Inc./Gerhard Lauck, supra, wherein the Panel comments upon the fact that the [German] Federal Ministry of Justice, the Federal Ministry of the Interior and the Office of the Defence of the Constitution publish books both free of charge and for money [and] The Office of the Defence of the Constitution also apparently sells used staff and official cars.
Throughout the group of Policy decisions selected from the above citations, wherein the Panel faced an unregistered trademark, wherein Complainant has been successful in ascertaining trademark rights and wherein the relevant domain name(s) has (have) been transferred, the Panels have normally found trademark rights derived from use, based on national laws, as a result of the application of traditional Private International Law principles. In Skattedirektoratet v. Eivind Nag (see supra), the Panel based its trademark analysis on Norwegian Law. In City of Hamina v. Paragon International Projects Ltd (seesupra), the Panel referred to Finnish Law: the name Port of Hamina may, in itself, be a trademark for services and protected as such, irrespective of trademark registration, if fulfilling the conditions required under Finnish law for the protection of non registered trademarks (service marks). The test applied to distinguish protected trademarks of this kind from those non protectible bears reference to whether the mark, by its use, has acquired distinctiveness so as to distinguish the goods and services of one undertaking from those of other undertakings. Under Section 2 third paragraph of the Finnish Trademarks Act the notion "established" is defined to mean that the mark has become generally known in the appropriate business or consumer circles in Finland as a symbol specific to its proprietor’s goods or services.[Emphasis added]. In Sydney Markets Limited v. Nick Rakis trading as Shell Information Systems (see supra), the Panel relied on common law principles applicable in Australia, to find that an unregistered trademark was protected: The panel finds that the contested domain name is identical to the Complainant’s unregistered common law mark "Sydney Markets". [Emphasis added]. The German cases also refer to national law: in Bundesrepublik Deutschland (Federal Republic of Germany) v. RJG Engineering Inc. (see supra), the Panel stated: It should be mentioned that the definition of a trademark in German law obviously corresponds with the definition of the same concept included in Article 2 of the European Directive of 21 December 1988 to approximate the laws of the Member States relating to trademarks (89/104/EEC), which, however, only deals with registered trademarks. Article 4 of the German Trademark Law contains provisions on the coming into existence of trademark protection. That Article prescribes: "Trademark protection shall accrue […]1. by registration of a sign as a trademark in the Register kept by the Patent Office; 2. through the use of a sign in the course of trade insofar as the sign has acquired a secondary meaning as a trademark within the affected trade circles; or; 3. by notoriety as a trademark within the meaning of Article 6bis of the Paris Convention for the Protection of Industrial Property (Paris Convention)".According to the above-mentioned Article 3 of the German Trademark Act a trademark can consist of "any signs, particularly words….." that have a distinctive character.[Emphasis added]; in Bundesrepublik Deutschland (Republic of Germany) v. RJG Engineering Inc./Gerhard Lauck, (see supra), the Panel stated: The Complainant submits that as a result of this trading activity the abbreviations "bundesjustizministerium", "bundesinnenministerium" and "verfassungsschutz" comply with the standards of Section 4 No. 2 German Trade Mark law which is authority to the effect that service and trade mark rights can be established not only by registration, but also by active use in public. In the absence of contrary evidence from the Respondent, the Panel is prepared to accept the Complainant's submissions as to service and trade mark use, and to find that the Complainant has unregistered service mark and trade mark rights in Germany. [Emphasis added].
Under Article 2-1 of the Spanish Trademark Law in force, trademark rights derive from a valid registration of the relevant sign. This Article does not establish (unlike its Norwegian, Finnish and German counterparts, as well as applicable common law principles), that exclusive rights to a trademark may arise from mere use of the sign. However, Article 34-5 of the cited Spanish Trademark Law establishes that the same rights deriving from a trademark registration shall be granted to an unregistered well-known trademark in Spain, in accordance with Article 6 bis of the Paris Convention. In brief, unregistered well-known trademarks enjoy the same rights as registered trademarks under Spanish Law.
Thus, in light of the above cited precedents, not only registered trademarks relating to geographic names are protected. Unregistered trademarks underlying said names also deserve protection, provided that national laws constitute the grounds for such protection. In the present case, Spanish law does protect unregistered trademarks, but establishes a higher threshold: the said unregistered trademarks must also be well_known (see supra).
Complainant has proved that its trademark is well-known in the relevant sector of the public, i.e., Catalonian speakers and throughout the geographical extension of the Autonomous Community of Catalonia (the mark is spelled in Catalonian. The Guide of Services of the Generalitat de Catalunya and the Brief Guide thereof are, according to Complainant, available to all of the citizens of the said Community and have been widely distributed to all Catalonian homes). Complainant has participated in numerous advertisement campaigns, book fairs, festivities and exhibitions. Complainant’s mark presence in mass media has been significant both locally and internationally. Such elements, added to the fact that Complainant’s mark is the very name of the Autonomous Community of Catalonia, as used in the Statute of Autonomy of Catalonia (seeGeneralitat de Catalunya v. General de Catálogos, WIPO Case No. D2002-0525, supra), amount to widespread knowledge and recognition of the said mark among the relevant sector of the public. In this respect, seeThe State of the Netherlands v. Goldnames Inc., WIPO Case No. D2001-0520, June 3, 2001: The term "Staten-Generaal" has achieved broad recognition and use within the Netherlands – among the general public, scholars, journalists and others – as referring exclusively to the Complainant’s parliament. In the mind of the Dutch public, the name "Staten-Generaal" has become synonymous with the country’s bicameral parliament. There likewise appears to be significant international recognition and use of the term in the same regard, albeit naturally to a lesser extent than within the Netherlands. From this it follows that the name "Staten-Generaal" has achieved a sufficient secondary meaning or association with the Dutch parliament such that the Complainant can be viewed as having legally protectable rights in the name.[…] The Complainant’s mark as representing the Dutch state is reasonably well-known throughout the world. See also Skattedirektoratet v. Eivind Nag supra: The term "Skatteetaten" is not capable of designating the many tax services that exist all over the world, since nobody in the respective states (except some singular persons who may be knowledgeable in the Norwegian language) would understand that term, which in reality outside Norway is a fantasy word without any meaning. In Norway, however, the - originally descriptive - term "Skatteetaten" is being used exclusively by the Tax Authorities. As a consequence of longstanding and extensive use the term "Skatteetaten" is now understood by the more than 3 millions tax payers and by the public at large as a sign (identifier) referring to Claimant.
This case is different to other cases relating to Spanish geographical names, such as Excelentisimo Ayuntamiento de Barcelona v. Barcelona.com Inc., WIPO Case No. D2000-0505, August 4, 2000 (regarding <barcelona.com>), Excmo. Ayuntamiento de Las Palmas de Gran Canaria v. Miguel García Quintas,WIPO Case No. D2002-0833, October 30, 2002 (regarding <laspalmasdegrancanaria.com>, <laspalmasdegc.com>, < laspalmasgc.com> and <laspalmas.net>), or Comunidad Autonóma de Galicia vs Jesús Sancho Borraz, WIPO Case No. D2000-1017, November 29, 2000 (regarding <xuntadegalicia.net> and <xuntadegalicia.org>), in that the other cases involved registered trademarks, whereas the case before us relates to an unregistered mark.
Numerous ICANN decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. See for example the following decisions: Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615, August 27, 2002; Compagnie Générale des Etablissement MICHELIN v. Lost in Space, SA, WIPO Case No. D2002-0504, August 1, 2002; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, November 6, 2001 ; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525, January 29, 2001; Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047, March 24, 2000; Toyota France and Toyota Motor Corporation v. Computer-Brain, WIPO Case No. D2002-0002, March 22, 2002, and Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd, WIPO Case No. D2000-0802, September 9, 2000.
In light of the above, Complainant has proved that the name GENERALITAT DE CATALUNYA performs the function of a trademark by distinguishing information services throughout the Autonomous Community of Catalonia, and that said mark is a well-known trademark according to evidence submitted by Complainant. Considering that according to Spanish Trademark Law, use of a non-registered well-known mark is granted the same protection as that derived from a registered trademark, this Panel finds that Complainant has trademark rights to GENERALITAT DE CATALUNYA and that the disputed domain name <generalitatdecatalunya.info> is confusingly similar to Complainant’s trademark.
Complainant has met the first requirement of the Policy, with regard to <generalitatdecatalunya.info>
Consequently, the first burden of proof has been met in connection to both of the contested domain names.
B. Rights or Legitimate Interests
There is no evidence in the record showing that Respondent has trademark rights or any other rights to GENCAT and/or GENERALITAT DE CATALUNYA anywhere in the world. He has not proved either to have rights to any variation of GENCAT and/or GENERALITAT DE CATALUNYA.
Considering that the trademark GENERALITAT DE CATALUNYA is a well-known trademark, widely recognized throughout the Autonomous Community of Catalonia, which is in fact the very name of such Community, and that GENCAT is normally used by Complainant to publicize the services and activities of the GENERALITAT DE CATALUNYA, both on-line and off-line, thus closely linking one trademark to the other, this Panel presumes that Respondent was aware of Complainant’s trademarks before acquiring the disputed domain names.
None of the justifications set forth in Paragraph 4 (c) of the Rules are applicable to Respondent. Therefore, this Panel concludes that Respondent has no legitimate rights or interests to the disputed domain names
C. Registered and Used in Bad Faith
According to Paragraph 4a)iii) of the Policy, Complainant must prove that the domain names have been registered and are being used in bad faith. This implies two different actions: that the contested domain names were registered in bad faith (an action occurred in the past) and that such names are currently used in bad faith (an action that is currently happening –at least, at the time when the Complaint is filed). These two actions are normally performed by the same individual or entity, and are sometimes analyzed jointly. This is not the case here. The disputed domain names <generalitatdecatalunya.info> and <gencat.info> were registered by one A.Lopez, but later on transferred in bulk to one Thomas Wolf, Wolf Domains. Consequently, the Respondent is not the person who originally registered the contested names in the first place. Therefore, we shall analyze each of such conducts independently.
I. The domain names were registered in bad faith
Complainant has submitted sufficient evidence showing that Mr. A. López has been named Respondent in another case, i.e. Banco Vitalicio de España, Compañía de Seguro y Reaseguros, S.A. v. A. López, WIPO Case No: D2002-0948, November 26, 2002. The relevant Panel in such case presumed that Respondent was a Spanish national, based on the contact information provided by him at the time of registration, as well as the failure to provide a valid Response to Complainant’s Complaint in such case, contesting Complainant’s arguments. Needless to say that the domain name involved in that case, i.e., <vitalicio.info>, reflected a well-known trademark and that Mr. A. López was found to have been acting in bad faith. The Panelist in that case also found that Mr. A. López had registered the following domain names: <mahou.info>, <koipe.info> and <recoletos.info>, also known in Spain.
Therefore, this Panel finds that the disputed domain names were registered in bad faith, because they were registered to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, considering that Mr. A. López has engaged in a pattern of such conduct (Paragraph 4b)ii) of the Policy).
Mr. A.López also provided inaccurate and false WHOIS data. According to a query conducted by Complainant on October 21, 2002, this individual’s contact info was: Registrant Name: A.LOPEZ; Registrant Street1: APARTADO 10166; Registrant City: VALENCIA; Registrant State/Province: 46080; Registrant Postal Code: 46080; Registrant Country: US; Registrant Phone: 34.34608251325. The same series of data is repeated with regard to the Administrative, Technical and Billing Contacts. This Panel finds it impossible for a State in the United States of America (US) to be called 46080, and for a State in such country, called 46080 to comprise a city named VALENCIA. The international calling code stated by the registrant (34) is that of Spain, not the US. Thus, the WHOIS data cannot be true, accurate or complete.
This fact pattern establishes a presumption of bad faith in the registration of the disputed domain names. See Ceyx Technologies v. Ceyx.Com, WIPO Case No. D2001-0681, July 9, 2001. Moreover, given the fact that Mr. A. López has been named Respondent in other cases involving registered trademarks and defaulted, and that his contact information was also incomplete in the previously cited case, this Panel presumes that Mr. A. López has repeatedly adopted deliberate measures to ensure that his true identity could not be determined, or so that there could be no communication. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, February 20, 2000.
Mr. A. López obtained domain name registrations for <gencat.info> and<generalitatdecatalunya.info>. Considering that GENCAT has no meaning in the Spanish Language, and that Complainant has made use of the trademarks GENCAT and GENERALITAT DE CATALUNYA in the territory of Spain, particularly throughout the Autonomous Community of the GENERALITAT DE CATALUNYA, territory in which Complainant also publicizes the said trademarks and has a constant presence in the daily national life, that Complainant normally uses the trademark GENCAT to publicize its services and activities, that the name GENERALITAT DE CATALUNYA is only meaningful when read in Catalonian, and that it is unlikely that registration, by the same person, of two domain names that comprised these two particular trademarks was merely coincidental, this Panel presumes that registrant had knowledge of the existence of Complainant and its trademarks (seeAntena 3 de Televisión S.A. c/ D. Javier García Quintas, WIPO Case No D2002-0537, September 6, 2002; ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425, February 12, 2002 see also point 6B supra). This leads the Panel to conclude that the contested domain names were registered in bad faith.
II. The domain names are being used in bad faith
The WHOIS data regarding the two contested domain names has been modified (<gencat.info> on October 29, 2001, and <generalitatdecatalunya.info> on December 10, 2001). Both records were updated to show Thomas Wolf/Wolf Domains as registrant, as well as Thomas Wolf Administrative and Technical Contact thereof. This means that the transferee of such domain names, i.e., Respondent, had also knowledge of the existence of Complainant and its relationship to the trademarks GENCAT. For the same reasons stated in point 6C.I. above, and considering that Respondent has not shown any legitimate rights or interests to the disputed domains, it is likely that Respondent knew of the existence of Complainant and its trademarks GENCAT and GENERALITAT DE CATALUNYA, it is unlikely that the transfer of two domain names which comprised these two particular trademarks, in bulk and to the same person, involved a bona fide coincidence and thus the Panel concludes that <gencat.info> and<generalitatdecatalunya.info> were transferred to and acquired by to Mr. Thomas Wolf in bad faith.
Respondent, Mr. Thomas Wolf, was, at the time when the Complaint was filed, re-directing visitors of the domain name <gencat.info> to another address: "www.gamma-burst.com." The Web site to which the latter electronic address resolves, contains phrases such as Link to us. Make $$$. Sign up! A software product called Gamma GenCat is sold through the said site. The domain name <gamma-burst.com> is not owned by Respondent. Respondent has not submitted evidence showing ownership of trademark rights to GENCAT. These facts lead the Panel to infer that Respondent’s conduct falls within Paragraph 4b)iv) of the Policy, in that by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to a different on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source of Respondent’s Web site or location or of a product on Respondent’s Web site or location, and therefore concludes that <gencat.info> is being used in bad faith.
On the other hand, Complainant has invoked the Passive Holding doctrine to show bad faith use of the domain name <generalitatdecatalunya.info>. This Panel agrees. By applying the Telstra factors (seeTelstra Corporation Limited v. Nuclear Marshmallows, supra), this Panel has found the following:
i) the Complainant’s trademark GENERALITAT DE CATALUNYA is well-known, has a strong reputation and is widely publicized throughout the Autonomous Community of Catalonia, as evidenced by its substantial use in the said Community and its substantial advertisement locally and internationally. Australia and in other countries,
(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name <generalitatdecatalunya.info>,
(iii) At the time of registration of this disputed domain name, the person who registered it, and who transferred it directly to Respondent, i.e., Respondent’s predecessor, Mr. A. López, took active steps to conceal his true identity, and has presented a pattern of such conduct (see point 6C)I. supra),
(iv) Respondent’s predecessor has, until the date when such predecessor transferred the said domain name to Respondent, provided actively and repeatedly, and failed to correct, false contact details, in breach of its registration agreement,
(v) the Complainant’s trademark GENERALITAT DE CATALUNYA is only meaningful when read in Catalonian, that it is the very name of the Autonomous Community that holds rights to it, that it is closely related to Complainant’s other trademark GENCAT, which, in turn has no meaning, that both trademarks were acquired together by Respondent,
(vi) Respondent is intentionally re/directing, in bad faith , visitors of <gencat.info>, the other domain name related to Complainant’s trademarks GENERALITAT DE CATALUNYA and GENCAT, to a different on/line location, thus creating a likelihood of confusion, and
(vii) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name <generalitatdecatalunya.info> by the Respondent that would not be illegitimate.
For the foregoing reasons, the Panel considers that Complainant has proven that the domain names <gencat.info> and <generalitatdecatalunya.info> were registered and are being used in bad faith, thus meeting its burden regarding the third requirement of the Policy.
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 names <gencat.info> and <generalitatdecatalunya.info> be transferred to Complainant.
Kiyoshi I. Tsuru
Dated: April 14, 2003
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