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Telefónica Comunicaciones Personales, S.A. and Telefónica de Argentina, S.A. and Telefónica de España, S.A. v. Unifon AE [2001] GENDND 1232 (26 June 2001)

WIPO Arbitration and Mediation Center

The Complainants are Telefónica Comunicaciones Personales, S.A., Telefónica de Argentina, S.A. and Telefónica de España, S.A. The Complainants are part of a holding where Telefónica de España, S.A. is the mother company. Complainants are based in Spain, Argentina, Brazil and Perú (hereinafter, Complainants). The Respondent is Unifon AE, which available information is as follows: P. Marinopoulou 7 Alimo, Athens, 15456, Greece (hereinafter, the Respondent).

The domain name at issue is <unifon.com>. The Registrar is Network Solutions, Inc.,

The WIPO Arbitration and Mediation Center (hereinafter, the Center) received the Complaint by e-mail on March 22, 2001, and in hardcopy on April 2, 2001. On

March 27, 2001, the Center sent the acknowledgement of Receipt.

On April 2 and on April 6, 2001, the Center sent Complaint Deficiency Notifications. Amended Complaint was received by the Center by electronic form on April 6, 2001, and by fax on April 23, 2001.

On April 2, 2001, the Center sent the Request for Registrar Verification. On May 4, 2001, the Registrar confirmed (i) that it had received the Complaint; (ii) that it was the Registrar of the disputed domain name; (iii) that the current Registrant is the Respondent; (iv) the administrative and other relevant contact details; (v) that the UDNDRP is applicable, and finally (vi) that the domain name is in <active> status.

After verifying that the Complaint met with the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (hereinafter, the Policy), the Rules and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter, "the Rules" and "the Supplemental Rules" respectively), the Center sent the Respondent a notification of Complaint and Commencement of Administrative Proceeding under Paragraph 2(a) of the Rules together with copies of the Complaint on April 25, 2001. The same notification was sent to the administrative and technical contact, as required by Paragraph 2(a) of the Rules. The notification was communicated by post/courier, by fax, and by e-mail. Both the Complainants and the Registrar were also notified of the initiation of the proceedings in accordance with the Policy and the Rules.

On May 17, 2001, the Respondent was notified that he was considered in Default.

On June 13, 2001, after receiving his completed and signed Statement of Acceptance and Declaration of Impartiality and Independence, the Center appointed Mr. Jose Carlos Erdozain as the single member of the Administrative Panel (hereinafter, the Panelist) in accordance with Paragraph 6(f) of the Rules. On the same date, the Center notified both the Complainant and the Respondent of the appointment of the Panelist.

The date scheduled for the issuance of the Panel’s decision is before June 26, 2001.

The language of the proceeding is English.

The Complainants, and specifically, Telefónica de España, S.A., are one of the most important services group in the world. The scope of the activity is telephone lines, cellular phones and telecommunications transmissions. During some years the Complainants have carried out a full and extensive telecommunications activity not only in Spain but also and mainly in South America. The Panelist has checked this information by accessing the Site <telefonica.es> and specifically <telefonica.com.ar/corp/negocios/comercio_exterior/fr_comercio_exterior.htm>.

Since early 80’s Telefónica de España, S.A., and more recently, the rest of the Complainants, have become one of the largest holdings in Spain and throughout the world. In addition, the Complainants have collaborated in the promotion of many cultural activities (see <fundacion.telefonica.es>).

The Complainants base the Complaint on various trademarks registrations which are quoted in the Complaint. Some of those trademarks were registered in April 1996, that is, too long before the Respondent did register the domain name at issue.

The Panellist has checked that the use of the word UNIFON in the most important search engines of the Internet shows that the Complainants are mostly appointed in all items.

(a) The domain name at issue is identical and therefore confusingly similar to the various trademarks including the word UNIFON that have been registered in favor of the Complainants.

(b) The Respondent does not have any right or legitimate interest in the domain name at issue due to the following:

(i) The Respondent registered the domain name in 1998.

(ii) The Site of the domain has had no activity since it was firstly registered by the Respondent.

(c) The domain name <unifon.com> was registered and is being used in bad faith, due to the fact that the Respondent has adopted a passive attitude, since it has not included any content whatsoever in the Site corresponding to the domain name at issue, and he is obstructing the legitimate use of the domain name by the Complainants.

Duly notified, the Respondent did not answer the Complaint.

The Policy sets forth in Paragraph 4(a) the cumulative elements that the Complainant must prove in order to succeed in an administrative proceeding for abusive domain name registration and use.

It is necessary to check whether there is a substantial identity between the words of the Complainants’ trademarks and the Respondent’s domain name. In this case, having compared the words of each of the distinctive signs at issue, the conclusion must be that the coincidence between the trademarks and the disputed domain name is absolute.

As a result, it is beyond question that the trademark <UNIFON> is identical to the domain name <unifon.com>.

In conclusion, the requirement of Paragraph 4.a.(i) is met.

The domain name at issue does not coincide with whole or part of the Respondent’s name, trademark, trade name, corporate name or any other legitimate interest of its own. The Respondent has not proved at all the existence of any right or legitimate interest of its own in the referenced domain name.

The Complainants have proved to be some legitimate right on various trademarks, which are identical to the domain name <unifon.com>. The commercial activity protected through those distinctive signs has been initiated quite long before the Respondent registered that domain, and the legitimate activity of the Complainants has been continued to date.

The Panel must, therefore, conclude that the Respondent does not have any legitimate interest in the disputed domain name, nor has proved so.

Therefore, the requirement of Paragraph 4.a.(ii) is met.

Due to the fact of the trademarks registrations, the Complainants’ well-known name, and the extension of their activity in the Spanish and South American market, I consider that the Respondent should have been aware of the unfair use of the trademarks including the word UNIFON, either in the moment of purchasing the domain name, or afterwards when using them in a passive way.

On the other hand, the lack of use by the Respondent of the disputed domain name <unifon.com> has been considered by previous decisions of the Center as evidence of bad faith. According to Decisions WIPO Case No. D2000-0018, Banco Español de Crédito, S.A. v. Miguel Duarte Perry Vidal Taveira, WIPO Case No. D2000-0020, Compagnie de Saint Gobain v. Com-Union Corp, WIPO Case No. D2000-0239, J. García Carrión, S.A. v. Mª José Catalán Frías and WIPO Case No. D2000-0277, Deutsche Bank AG v. Diego-Arturo Bruckner, inter alia, the use in bad faith of the Domain Name may be declared even if it has not been used at all, nor there are serious purposes thereto.

Accordingly, the Panelist considers that the Respondent is using the domain name <unifon.com> in bad faith by just using it in a passive way, that is, by not including any contents whatsoever within the Site corresponding to the domain name at issue, since this sort of use eventually prevents the Complainants from making a legitimate use of it on the grounds of previous trademark or any other legitimate rights.

Therefore, the domain name <unifon.com> was registered and is being used in bad faith.

The Complainants have proved that the domain name is identical to trademarks rights of the Complainants, that the Respondent has no rights or legitimate interest in the domain name at issue, and that the Respondent did register and use the domain name in bad faith. Therefore, according to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel requires the transfer of the domain name <unifon.com> to the Complainants as requested.

Jose Carlos Erdozain
Sole Panelist

Dated: June 26, 2001