Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

The Complainant is GRUPO FERROVIAL, S.A., a company incorporated in Spain with domicile in Príncipe de Vergara 135, 28002, Madrid, Spain (hereinafter, the Complainant). The Respondent is Carlos Zamora with domicile in Calle Córdoba, 23 - 2º A, 35016, Las Palmas de Gran Canaria, Spain (hereinafter, the Respondent).

The domain name at issue is "ferrovial.net". The Registrar is REGISTER.COM (hereinafter, the Registrar) with domicile in 575, 8^th Ave., 11^th Floor, NY, NY, 10018, USA.

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 16, 2001. The Registrar confirmed (i) that it 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, and finally (vi) that the Uniform Domain Name Dispute Resolution Policy was applicable.

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 19, 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) and e-mail (Complaint 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 8, 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, GRUPO FERROVIAL, S.A., is one of the largest construction companies in Spain. The importance of the Complainant in the Spanish and European market bases not only in its revenues, which amounted in 1999 up to € 2,65 billion, but also in the different sectors of industrial activity towards which the Complainant focuses. These sectors are related with the construction, transport infrastructure concessions and housing developers.

The Complainant was incorporated in the 50s, and ever since it has developed mainly into the construction area of business. It was elected to carry out projects of importance such as that of Expo 92 and of Barcelona Olympiads. GRUPO FERROVIAL has constructed more than 8,000 kms. of roads and freeways, 1,400 kilometres of highways. In addition, it has improved more than 20,000 kms. of roads. GRUPO FERROVIAL has also undertaken the construction of water infrastructures and it has presence in areas other than the construction. As a matter of fact, the Complainant has obtained infrastructure concessions (development and maintenance of car parks); it manages real estate projects (housing development); services (solid urban waste collection, integrated water management) and telecommunications (the Complainant has acquired a percentage of one of the major telecommunications companies in the Spanish market).

GRUPO FERROVIAL is known throughout Europe and all over the world.

The Complaint bases the Complaint on the ownership of trademarks and trade names FERROVIAL. 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 have been attached as Annex 3 to the Complaint. I shall only refer to some of those certificates as follows:

- "FERROVIAL", registered on February 23^rd, 1977 (Class 1) with registration number 724.267.

- "FERROVIAL", registered on 1977 (Class 19) with registration number 724.275.

- "FERROVIAL", registered on March 21, 1977 (Class 35) with registration number 724.276.

- "FERROVIAL", registered on 1977 (Class 16) with registration number 724.274.

- "FERROVIAL", registered on March 21, 1977 (Class 42) with registration number 724.280.

- "FERROVIAL", registered on September 9, 1995 (Class 1) with registration number 1.734.932.

- "FERROVIAL", registered on September 18, 1995 (Class 2) with registration number 1.734.933.

- "FERROVIAL", registered on September 20, 1993 (Class 3) with registration number 1.734.934.

- "FERROVIAL", registered on November 4, 1994 (Class 40) with registration number 1.734.971.

- "FERROVIAL", registered on November 4, 1994 (Class 41) with registration number 1.734.972.

- "FERROVIAL", registered on November 4, 1994 (Class 42) with registration number 1.734.973.

The Complainant has also proved to be owner of registrations of the trademark "FERROVIAL" in many classes as a figurative and denominative trademark.

The Complainant is the owner of the following international trademark:

- "FERROVIAL", registered on September 17, 1993 (Class 37) with effects in Germany, Austria, Belgium, Holland, Luxembourg, Russia, France, Hungary, Italy, Morocco, Poland and Portugal, with registration number 608.088.

GRUPO FERROVIAL has requested the following distinctive signs as CTM:

- "FERROVIAL AGROMAN", requested on July 19, 1999 (Class 37) with request number 1.245.786.

GRUPO FERROVIAL, S.A. is the owner of the following trademarks in countries other than Spain:

- "FERROVIAL", registered in Argentina on December 19, 1995 (Class 37) with registration number 1.585.638.

- "FERROVIAL", registered in Colombia on July 31, 1995 (Class 37) with registration number 178.030.

- "FERROVIAL", registered in the United Kingdom on January 12, 1993 (Class 37) with registration number 1.523.983.

"FERROVIAL", registered in Mexico on May 25, 1995 (Class 37) with registration number 492.851.

Finally, GRUPO FERROVIAL trades under the tradename GRUPO FERROVIAL, registered on May 20, 1994 with registration number 172.142.

Likewise, GRUPO FERROVIAL is registrant of the following domain names <ferrovial.com>, <ferrovial.es>, <ferrovial.org>, <grupoferrovial.com>,<grupoferrovial.org>, <grupoferrovial.net>, <grupo-ferrovial.com>,<grupo-ferrovial.org>, <grupo-ferrovial.net> (see Annex 4 to the Complaint).

The Respondent’s activities are not known and no response has been submitted to specify them.

The Web Site of the domain name at issue is redirected to the Web Site <construccion.com>. In Complainant’s opinion this demonstrates that the Respondent’s intentions have been to take advantage of the trademark FERROVIAL.

The Complainant also stresses that the owner of the domain name <construccion.com> is Miguel García. This individual is also owner of many domain names that are similar to geographical places of the Canary Islands or to famous trademarks like "DON ALGODON". The Complainant attaches a list of those domain names in Annex 6.

a) The domain name <ferrovial.net> is identical and therefore confusingly similar to the various trademark registrations FERROVIAL 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 "ferrovial.net" 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 is not using, nor are there any demonstrable preparations to use the domain name <ferrovial.net>.

iv) The Respondent does not own any right to the trademark FERROVIAL.

v) The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks, nor has it licensed to apply for the registration of the domain name at issue.

c) The domain name <ferrovial.net> 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) The Web Site of the domain name <ferrovial.net> is automatically redirected to the Site "construccion.com". The registrant of this domain name is Miguel García who appears as registrant of domain names similar to famous trademarks.

iv) The fact of redirecting the domain name at issue to the Web Site <construccion.com>, which is under construction, shows that the domain name was registered in bad faith.

v) The passive attitude regarding the Web Site linked to the domain name <ferrovial.net> must be judged as a cause of bad faith.

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:

This requirement needs that the domain name is compared with the trademark or any other legitimate right owned by the Complainant. There will be identity or confusing similarity as long as the subjective decision of an impartial observer considers so. This decision is issued on the grounds of various criteria. It is identical if both distinctive signs are similar. On the other hand, the domain name is confusing similarity if it is rather similar to the trademark or trade name of the Complainant in such a way that there is a risk of confusion in the public as to the true origin of the ownership of the domain name, or products or services of the Complainant. This risk may be due to a substantial identity between the words of the Complainant’s trademarks and the Respondent’s domain name.

It cannot be relevant the generic TLD particle. The particles "com", "org" or "net" are not relevant to establish the comparison, since they do not give any particularity or difference to the domain name chosen by the registrant. Those particles are usually used to make a difference of the sectors and activities advertised through the domain name. In the practice, however, this purpose has failed, since registrants do dedicate the Web Sites to activities other than those initially intended under the TLD particles.

The Respondent has linked the Web Site to a different Site, namely the Site called <construccion.com>. Thus the Respondent is aware of the origin of the trademark or corporate image of the Complainant. Therefore, the Respondent cannot deny that in registering the domain name <ferrovial.net>, he has tried to create confusion with the trademarks or trade fame of the Complainant.

Taking into account the above mention criteria as well as the notorious activity of the Complainant, there is no reason to consider that the trademark FERROVIAL, duly registered by the Complainant, is not identical to the domain name <ferrovial.net>.

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 <ferrovial.net>

The absence of rights or legitimate interest of the Respondent in the domain name <ferrovial.net> is revealed through different ways. The significance of this requirement is to show that there is not any reason why the Defendant should use fairly or is entitled to use the domain name. The absence of right or legitimate interest is the premise of the use of the domain name in bad faith.

There are many criteria to find out whether the Respondent has no right or interest in the use of the domain name: existence of a trademark or any other legitimate right in favour of the Respondent; active or passive attitude of the Respondent in order to defend his domain name or even applications for registration of trademarks or any other legitimate right.

The domain name <ferrovial.net> is not similar to whole or part of the Respondent’s name, or any of his trademarks or trade name.

The Respondent has not proved to have any legitimate interest or right in the words of the domain name <ferrovial.net>. On the contrary, the Complainant has submitted evidences about the registrations of trademarks FERROVIAL in the geographical area where the Respondent lives in (i.e. Spain).

The Respondent has not carried out any serious purpose to undertake any commercial activity related with the disputed domain name. The absence of this purpose is an evidence that the Respondent does meet with the above mentioned requirement.

It should be stressed that the Complainant confirms that the Respondent has not been authorised, on the grounds of a license agreement to use the name FERROVIAL. The Respondent has no relationship with the legitimate owner of the rights related to the trademarks of the Complainant.

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"

The Complainant is the trademark holder of many trademark rights (see Annex 3 to the Complaint).

The approach to the concept of bad faith has to be focused not only from a subjective, but also from an objective perspective. 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.

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 was not aware of the trademark FERROVIAL, either in the moment of purchasing the domain name at issue, or afterwards when using it. It should be taken into account that GRUPO FERROVIAL has registered FERROVIAL in all and any of the Classes of the International Classification. Therefore, the activity of the Complainant spreads to different sectors of commercialisation.

It should be presumed 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 probatio diabolica. 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.

The Panelist must conclude that the Respondent was completely aware that the registration of the domain name <ferrovial.net>, on which the Respondent has not proved to have any right or interest, 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 to the Complaint clearly shows that the Respondent does not use the Web Site of the domain name.

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 <ferrovial.net> 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 "ferrovial.net" to be transferred to the Complainant.

Jose Carlos Erdozain
Sole Panelist