Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

The Complainant is FERROVIAL SERVICIOS, S.A., a company incorporated in Spain with domicile in Príncipe de Vergara 135, 28002, Madrid, Spain (hereinafter, the Complainant). The Respondent is Alvamiren, S.L., with domicile in Villa 5-7, Sant Cugat del Vallés, 08190, Barcelona, Spain (hereinafter, the Respondent).

The domain name at issue is <ferroser.com>. The Registrar is CORE Internet Council of Registrars (hereinafter, the Registrar) with domicile in World Trade Center II, 29 Route de Pré-Bois, CH-1215, Geneva, Switzerland.

The WIPO Arbitration and Mediation Center (hereinafter, the Center) received the Complaint by e-mail on January 4, 2001 and in hardcopy on January 10, 2001. On January 9, 2001 the Center sent the acknowledgement of Receipt to the parties as well as to the Registrar.

On January 10, 2001, the Center sent the request to the Registrar for the verification of the particulars of the domain name at issue. The request was answered on

January 11, 2001. The Registrar confirmed (i) that CORE INTERNATIONAL COUNCIL OF REGISTRARS was not in receipt of the Complaint; (ii) that the domain name at issue had been registered through the Registrar; (iii) that the current Registrant is the Respondent; (iv) the administrative contact person’s and others’ details; (v) that the domain name is in "Active" status (production), and finally (vi) that the Uniform Domain Name Dispute Resolution Policy had been CORE’s policy since

December 1, 1999.

After verifying that the Complaint meets 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 under Paragraph 2 (a) of the Rules together with copies of the Complaint on January 15, 2001. The same notification was sent to the administrative contact, technical contact, zone contact and billing contact, as required by Paragraph 2(a) of the Rules. The notification was communicated by post/courier (with enclosures), facsimile (without attachments) and e-mail (without attachments). Both the Complainant and the Registrar were also notified of the initiation of the proceedings in accordance with the Policy and the Rules.

The Respondent did not answer the Complaint. Accordingly the Center sent the parties the Notification of the Respondent’s Default on February 5, 2001.

On February 19, 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 March 4, 2001.

The language of the proceeding is English.

The Complainant, FERROVIAL SERVICIOS, S.A., is a company, which belongs to a Spanish group of companies (namely, the GRUPO FERROVIAL). GRUPO FERROVIAL is one of the largest group of companies in Spain in the field of construction and railway infrastructure. As a matter of fact, GRUPO FERROVIAL has been in charge of projects of most relevance, such as the Expo of Sevilla and the Barcelona Olympiads.

As stated the Complainant is one of the companies of GRUPO FERROVIAL. It is known by the acronym FERROSER that coincides with the first syllables of its corporate name (i.e. Ferrovial Servicios). Its activity is focused on services of a different nature (e.g. solid urban waste collection, water supply and sewer services and buildings and industrial maintenance). The Complainant has proved that it is a very well known company, not only in Spain, but also throughout Europe. This has been evidenced in Annex 3 by providing the actual economic situation and business scope of the Complainant. The Complainant has managed concessions of urban services and integrated water in more than 100 municipalities. The Complainant has rendered services for a population over 1,400,000.

The Complaint is based on the ownership of many trademarks FERROSER. They have been registered before the Spanish Patent and Trademark Office (hereinafter, the SPTO). The Complainant has attached certificates of the foregoing trademark registrations.

These certificates are attached as Annex 4 to the Complainant.

The trademarks are registered as follows:

- "FERROSER" that was registered on March 20^th, 1998 (Class 16) under registration number 2.118.171.

- "FERROSER" that was registered on March 5^th, 1998 (Class 39) under registration number 2.118.172.

- "FERROSER" that was registered on March 5^th, 1998 (Class 40) under registration number 2.118.173.

Likewise, the mother company of the GRUPO FERROVIAL, that is, GRUPO FERROVIAL, S.A. is the registrant of several domain names, including the following <ferrovial.com>, <ferrovial.es>, <ferroser.org> and >ferroser.net> (see Annex 5 to the Complaint). The domain names <ferroser.org> and <ferroser.net> were registered on April, 14, 2000, and domain name <ferrovial.com> was registered on April 19, 2000, whereas the domain name at issue was registered on April 4, 2000.

a) The domain name <ferroser.com> is identical and therefore confusingly similar to the various trademark registrations FERROSER that are registered in favor of the Complainant as previously stated.

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

i) The Respondent has no relationship with the Complainant.

ii) The Respondent has not been known under the domain name, or under any other related name to such a domain name.

iii) The Respondent does not own any right to the trademark FERROSER.

c) The domain name <ferroser.com> was registered and is being used in bad faith, due to:

i) The Respondent has registered the domain name to impede the Complainant a fair and legitimate use of the virtual space of the domain name.

ii) The lack of any content within the Web Site corresponding to the domain name at issue, which prevents the Claimant from making legitimate use of such a domain name.

iii) In Complainant’s opinion, there are circumstances that show the intention of the Respondent of selling or transferring the domain name to third parties for valuable consideration in excess of the domain name registrant’s out-of-pocket costs directly related to the domain name.

Duly notified of the Complaint, the Respondent did not answer it.

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. I shall examine each one of these elements in the following items:

"4.a. (i) Identity or Confusing Similarity"

The generic TLD ".com" cannot be taken into consideration as part of the comparison, since it does not add any particularity or difference to the domain name chosen by the registrant. That particle is only a way to theoretically differentiate the sectors and activities advertised through the domain name. In the practice, however, this purpose has been fully left behind without the relevant organisations or registrars have had the intention to revert the status of the facts to the right understanding.

In other words, the particles used for the TLDs are of no significance with respect to the question of the identity or confusing similarity. On the contrary, the point is to check whether there is a substantial identity between the words of the Complainant’s trademarks and the Respondent’s domain name. This substantiality can be deduced from different criteria. The case law on trademarks can be helpful in this respect. From an objective point of view the comparison must take into account the phonetic and graphical analysis, as well as the number of coincidences in the words to be compared. From a subjective point of view, the Panelist must focus the analysis in the part of the words to be compared, which is rather confusing by having used the same relevant distinctive sign.

Likewise, it can be considered as a notorious fact that there is a significant coincidence between the domain name at issue and the words that the Complainant used to form the trademarks, which are one of the legal bases of the actual proceeding, as well as the Complainant’s corporate name.

As a result, it is beyond question that the trademark FERROSER, duly registered by the Complainant, is identical to the domain name <ferroser.com>.

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

"4.a.(ii) Absence of Respondent Rights or Legitimate Interest in the Domain Name <ferroser.com>

The domain name at issue does not coincide with the whole or either part of the Respondent’s name, trademark, trade name or corporate name (i.e. Almaviren, S.L.).

In addition, although the Respondent did have the chance to, the Respondent has not answered the Complaint. Accordingly, the Respondent did miss the opportunity to submit any evidence of legitimate interest or right in the domain name <ferroser.com>, if any.

Therefore, if the Respondent have had any legitimate interest or right in the words forming the domain name <ferroser.com>, he should have had an active disposition in order to defend such interest or right. Since this is not the case and, on the contrary, the Complainant has proved more than sufficiently that it has registered the trademark FERROSER in the geographical area where the Respondent lives in (i.e. Spain), the Panelist must conclude that the Respondent does not have any legitimate interest in the domain name <ferroser.com>.

Furthermore, the Respondent has adopted a passive attitude, since there is no serious purpose to undertake any trade or commercial activity related with the disputed domain name. In principle, the absence of this purpose should not be taken as an evidence that the Respondent has no legitimate interests or rights on the domain name. But together with other circumstances, such as the identity with Complainant’s trademarks, Complainant’s reputation in the market inter alia, the conclusion can only be that the Respondent cannot defend any right or legitimate interest on the use or ownership of the domain name.

Likewise, it should be stressed that the Complainant clearly states that the Respondent is not duly authorized, on the grounds of a license agreement or any other sort of right or entitlement, to use the name FERROSER. The Respondent has no relationship at all with the legitimate owner of the rights related to the trademarks of the Complainant.

Finally, it cannot be decisive in this case the previous registration of the domain name in comparison with the date in which the Complainant’s domain names were also registered. It should be noted the prior Complainant’s trademarks records.

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

"4.a.(iii) Respondent’s Registration and Use of the Domain Name in Bad Faith"

As to the bad faith requirement, it should be stressed that the Complainant is the trademark holder of several trademark rights (see Annex 4 to the Complaint).

The concept of bad faith has to be focused not only from a subjective, but also from an objective approach. It is not only the knowledge of the Respondent when purchasing a domain name similar to a relevant trademark, it must also be decisive the sole fact of the continuous use of such a domain name under conditions revealing that the Respondent’s activity, both registration and actual use, cannot be allowed without at the same time causing a damage to a legitimate interest or to a potiur ius of a third party.

Due to the fact of the above-mentioned trademark registrations, the notorious and well-known name of the Complainant’s trademarks and corporate name, mainly along the Spanish market and also since the Respondent is Spaniard, it cannot be accepted that the Respondent did not know the name or trademark FERROSER, either in the moment of purchasing the domain name at issue, or afterwards when using it. There must be a iuris tantum presumption that the Respondent is using in bad faith the domain name if the foregoing conditions, inter alia, are met, since otherwise it would be very difficult, almost impossible, for the Complainant to demonstrate the internal animus of the Respondent when registering the domain name, or when using it, and thus to demonstrate that an illegal activity has taken place. Another solution would mean for the Complainant a so-to-speak diabolical prove. Consequently, the burden of the prove must be for the Respondent who must prove that he has purchased or is using in good faith the disputed domain name.

As a result, the Panelist must come to the reasonable conclusion that the Respondent was completely aware that the registration of the domain name <ferroser.com>, on which the Respondent has not proved to have any right or interest, was something deliberate that caused a damage to and collides with the rights and legitimate interests of the Complainant.

In the Complainant’s opinion, the lack of use by the Respondent of the disputed domain name is an evidence of his bad faith. Annex 5 of the Complaint clearly shows that the Respondent does not use the Web Site of the domain name but for offering the service of registering domain names. This kind of offer is something usual in the conflicts between domain names and trademarks.

According to previous decisions of the Center, which are quoted in the Complaint (see Decisions D2000-0018 Banco Español de Crédito, S.A. v. Miguel Duarte Perry Vidal Taveira, D2000-0020 Compagnie de Saint Gobain v. Com-Union Corp , D2000-0239 J. García Carrión, S.A. v. Mª José Catalán Frías and 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 does agree with the argument that the Registrant is also using the domain name in bad faith by just using it in a passive way, that is, by not including any contents whatsoever within the Web Site corresponding to the domain name at issue, since this sort of use eventually prevents the Complainant from making a legitimate use of it. Nevertheless, in my opinion this conclusion is valid as long as the rest of requirements, previously analysed, are met. The mere lack of use should not per se be considered as decisive to confirm Respondent’s bad faith.

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

The Complainant has proved that the domain name is identical to its trademark, 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 registration of the domain name <ferroser.com> to be transferred to the Complainant.

Jose Carlos Erdozain
Sole Panelist