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Mercadona, S.A. V. José Delgado Hueso [2001] GENDND 964 (16 May 2001)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Complainant is MERCADONA, S.A. a company based in Valencia, España, with its principal place of business located at Calle Valencia, 5, Tavernes Blanques, España (the "Complainant).

The Respondent is Mr. José Delgado Hueso, who resides at C/ Ramón Gordillo nº 5, 8, Valencia, España (the "Respondent").

The domain name at issue is <hacendado.com>. The registrar is Namesecure, Inc.(the "Registrar") of Concord, California, United States of America.

The WIPO Arbitration and Mediation Center (the "Center") received the Complaint of MERCADONA, S.A. on February 12, 2001, by email and in hardcopy.

The Complainant made the required fee payment.

The Center sent to the Registrar, a request for verification of registration data which was answered in February 16, 2001, when the Registrar confirmed, interalia, that the domain name in dispute was registered through the Registrar, that the "current registrant" is the Respondent, and that the domain name is active.

Having verified that the Complaint satisfied the formal requirements of the ICANN 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 Dispute Resolution Policy ("the Supplemental Rules") the Center sent the Respondent a notification under Paragraph 2(a) of the Rules, together with copies of the Complaint on March 1, 2001.

The Respondent answered to the Complaint by e-mail on March 20, 2001, and in hard copy on March 23, 2001. The Center sent an acknowledgement of Response on March 21, 2000.

On April 24, 2001, after receiving his completed and signed Statement of Acceptance and Declaration of Impartiality and Independence, the Center appointed Mr. Antonio Millé as the single member of the Administrative Panel (the "Panelist"). On the same date, the Center notified the parties of this appointment.

On May 2, 2001, the Panelist received via courier a complete copy of the Complaint, the Response, and the corresponding enclosures. On the same date, the Panelist asked for a prorogation of the term for the production of the Decision, being accepted the petition by the Center, that affixed May 16, 2001, as day of expiration of the term to produce a decision in the present case.

The trademark upon which the Complaint is based is HACENDADO. As per the information provided by Complainant, that the Respondent did not deny, the status of this trademark is the following:

a) MERCADONA has registered before the Spanish Oficina Española de Patentes y Marcas:

- "HACENDADO", registered on July 5, 1988 as a Class 33 trademark, with registration number 1182185.

- "HACENDADO", registered on February 4, 1994 as a Class 30 trademark, with registration number 1777320.

- "HACENDADO", registered on July 5, 1996 as a Class 29 trademark, with registration number 2006994.

- "HACENDADO", registered on July 5, 1996 as a Class 31 trademark, with registration number 2006995.

- "HACENDADO", registered on July 5, 1996 as a Class 32 trademark, with registration number 2006996.

- "HACENDADO", registered on September 5, 1996 as a Class 1 trademark, with registration number 2011979.

- "HACENDADO", registered on September 5, 1996 as a Class 5 trademark, with registration number 2011980.

b) MERCADONA has also registered before the Office for Harmonization in the Internal Market the following trademarks:

- "HACENDADO", requested on July 7, 1999 and registered on September 19^th 2000, as a Class 1, 5, 29, 30, 31, 32 and 33 trademark, with registration number 1236876.

- "EL GRAN VIÑEDO DE HACENDADO", requested on July 15, 1999 and registered on September 25, 2000 as a Class 30, 32 and 33 trademark, with registration number 1242064.

- "HACENDADO", requested on May 15, 2000 as a Class 2, 6 and 16 trademark, with request number 1655612.

The Complainant proved also that it is the registrant of different domain names, allegation that shall be not examined here because it is undifferent for the Case decision.

On June 6, 2000, the Respondent filed before the Spanish Patents and Trademarks Office an application of registration of the trademark HACENDADO, under the 36 Class, for the development of real estate activities. The Claimant filed an opposition writ to such a request, being pending the resolution of the matter.

The Complainant asserts that it is "the leading distribution company in the sector of supermarkets in Spain .. focused in the distribution of alimentary and household products for consumption .. has 493 supermarkets spread all over Spain .. 199 of them in the Autonomous Community of Valencia. "

The Complainant declares that "the use of private labels in order to offer products at economic prices has been one of the key elements for the economic growth of the Complainant" attesting that the trademark HACENDADO identify one of its private labels. As per the Complainant, "the total turnover derived from the products distributed under the "HACENDADO" trademark in 2,000 has been of almost 97,188 million pesetas (584,11 million e ), being 1,045 products distributed under such a trademark". The Respondent sustained that the Complainant has never publicized the trademark HACENDADO.

The Respondent declares to be "an Internet professional, a field in which he has been operating for more than three years under his own name or under the name of the company TRENET-Imagen y Comunicación .. works and collaborates with different official institutions, universities, public and private enterprises, newspapers and charity organizations who seek his professional expertise".

The Complainant alleges as evidence of a behavior of the Respondent that he registered the domain names <bancajamediterraneo.com> and <bancaja-cam.com> similar to the denomination of important Spanish banks as well as the domain names <circuitodecheste-dom.com> and <circuitoricardotormo-dom.com> similar to the denomination of a race circuit well known in the Valencia’ area (as per the Complainant, additional evidence of behavior derives from the fact that the Respondent requested the trademark CIRCUITO DE CHESTE provoking the opposition of the enterprise exploiting the racing circuit). The Panelist researched the Wohis database, finding that the two domain names first mentioned are "free" at the present, being registered at the Respondent name (or at the name of his business TreNET) only the domain names <josedelgado.com>, <valencianet.com>, <hacendado.com>, <circuitodecheste-dom.com>, <circuitoricardotormo-dom.com>, <minidiario-dom.com>, <valencianet-dom.com>, <bancaja2-dom.com>, <tiendawap3-dom.com> and <telefoniawap-dom.com>.

Both parties agree that in an imprecise date, that the Complainant describes as "prior to filing this Complaint", the Complainant contacted "by telephone" the Respondent in order to make an offer for the transfer of the disputed domain name, being the Complainant "last offer, amounting up to 250,000 pesetas (e1,502.53 e )" rejected by the Respondent’s representative. The Respondent affirms that his representative "offered a similar amount to MERCADONA in return" for the rennouncement to claims related with the disputed domain name.

The Panelist verified that the use of the disputed domain name as "address" in an Internet navigation tool redirects to the Respondent’s personal Web site in <josedelgado.com> where by clicking on the image included in the first page it is obtained access to TreNET’s Web site in <valencianet.com>.

a) The only difference between the Complainants trademark and the disputed domain name is that this one includes the extension corresponding to the Generic Top Level Domain ".com".

b) The respondent should be considered as having no rights or legitimate interests in respect of the <hacendado.com> domain name because:

i) the purpose of the Respondent in registering the domain name: "as the Respondent lives in Valencia were the Complainant trademarks are well-known and he has no relationship neither with the Complainant nor to its trademarks, it must be concluded that the registration of the disputed domain name the only goal of impede the Complainant to use its trademark as domain name, forcing the Complainant ‘to pay an amount clearly in excess of the out-of-pocket costs".

ii) The Respondent does not develope any commercial activity connected with the name "hacendado" in more than one year.

iii) The Web site acceded by the domain name in dispute has not any specific content from the registration date of said domain up to date.

iv) The Respondent have not rights on the trademark HACENDADO, because:

- The Complainant is the only holder of the rights related to the HACENDADO trademarks. The fact that the Respondent requested this trademark under Class 36, for the development of real estate brokerage services, is not an obstacle for considering that the Respondent has no rights on the above mentioned trademark.

- It is a behavoir of the Respondent to request trademarks corresponding to domain names he registered as he does in the case of the trademark CIRCUITO DE CHESTE and the domain name <circuitodecheste.com>.

c) the domain name should be considered as having been registered and used in bad faith, because:

i) The Respondent registered with bad faith the domain name in dispute, as arises from:

- The Respondent lives in Valencia, which is the province in Spain where the Complainant has a more significant implantation, being the products marketed under the HACENDADO trademark distributed through the MERCADONA network of supermarkets.

- The Respondent registered the domain names <bancajamediterraneo.com> and <bancaja-cam.com> when the two most important saving banks in Valencia were discussing a merger, rennouncing to this registration when the deal sunk, and is currently the registrant of the domain name <bancaja.com> coincident with the name of the most important saving bank in the province of Valencia.

- The Respondent does not offer real estate services neither by himself nor through TRE-NET. Actually, the web site linked to the disputed domain name is not referred at all to but it redirects to the TRE-NET’s corporate web site which is only focused on web design and Internet advising services.

ii) The Respondent use with bad faith the domain name, as is probed by:

- The Respondent’s passive attitude by just redirecting the Internet users to Tre-NET’s web site. Such an attitude must be considered as a behaviour in bad faith under two possible points of view: (1) as a bad faith passive behaviour, (2) as an attempt to sell the disputed domain name to the Complainant for a valuable consideration in excess of the reasonable out-of-pocket costs.

- The implicit purpose of the Respondent of impeding the use on the Internet of one of the most valuable Complainant’s trademarks, impeding therefore the normal development of its online activities.

a) "In Spain and other Spanish-speaking countries, the meaning of the word HACENDADO (landowner) is not related to alimentary industries at all, but to real estate brokerage concepts".

b) Once registering the domain name in dispute, the Respondent was unaware of the use of HACENDADO as Complainant’s trademark, "since he was not a customer of its supermarkets and did not know its particular trademarks better than those of other supermarkets such as: Carrefour, Enaco, Grupo Bravo, Hipercor, Alcampo, Eroski, Consum".

c) No confusion seems possible among such diverse activities as foods and real estate, and the Defendant "can not possibly intend to take profit from an alimentary trademark that has not been disseminated nor publicized"

d) The respondent requested the disputed domain name, on September 2, 1999, more than a year before the complainant did so with the domain names with the same content in ".net" an ".org" gTDL’s. If he had acted in bad faith, he would have then registered all the domains.

(e) The Complainant’s presented an erroneous Whois database listings, including domain that are not held by the Defendant.

(f) The trademark HACENDADO was never been publicized and it is therefore unknown to most people outside the complainant’s environment, reason for which the Respondent ignored the existence of a trademark of alimentary products bearing this name at the time of the domain name registration.

(g) The most evident prove of the Respondent’s good will is the incorporation of HACENDADO S.L., a society which object is real estate brokerage, in January 25th 2001, before being informed the Respondent of this complaint and aware of this controversy.

(h) The Respondent has started his activity with views towards the future as in probed by means of the correspondence with clients he annex to the Response. After the reaction of the Complainant, he "has sought legal advice and has remained prudent in waiting for all the necessary legal information for then acting accordingly and demanding the cease of all hostilities through jurisdictional measures".

(i) The Respondent "has never Contacted the complainant and it was the complainant who offered to buy something that the respondent was not willing to sell. As mere response to the complainant’s menaces, the respondent has asked it to contact his lawyer".

The Policy institutes in Paragraph 4(a) the cumulative elements that shall be proved by the Complainant to succeed in an administrative proceeding for abusive domain name registration. We will examine each one of these elements in the following points.

Being the ".com" extension an attribute of the gTDL, common to all the domain names under this TDL, there is no possibility to discuss that the trademarks HACENDADO is not identical to the domain name <hacendado.com>. Therefore, the requirement of Paragraph 4.a.(i) is met.

As per the information both parties provided in this case, the first contact between them was the telephonic call that the Complainant made to the Respondent (and then to the Respondent’s lawyer) in an imprecise date before the filing of the Complain (issued in February 12, 2001). In this way, the Panelist shall assume that until the beginning of February 2001, the Respondent lacks of any notice about the intention of the Complainant of disputing the domain name <hacendado.com>.

Before the beginning of February 2001, the Respondent:

- Offered real state brokerage services online to different clients (March and May, 2000).

- Applied (in June 6, 2000) for the registration of the trademark HACENDADO in class 36 in a pending procedure where exist an apposition of the Complainant.

- Incorporated (in January 25, 2001) the commercial society HACENDADO SL.

These circumstances are in the Panelist opinion sufficient demonstration that the Respondent:

- before any notice of the dispute, make preparations to use the domain name in connection with a bona fide offering of real state brokering services; and

- have acquired legal right to identify his real state services brokering business with a corporate denomination identical to the domain name.

In this way, the Panelist concludes that the Complainant failed in demonstrating that the Respondent have not rights or legitimate interest to the domain names for purposes of Paragraph 4(a)(ii) of the Policy, and that the Respondent has demonstrated the existence of the circumstances alluded in paragraphs "i." and "ii." of section 4.c. of the Policy.

On these bases, the Panelist concluded that the respondent has legitimate interest in the domain name <hacendado.com >. Therefore, the requirement of Paragraph a.(ii) is not met.

First of all, it shall be remembered that in Spanish language, the word "hacendado" is the tense of a verb and an adjective of relatively frequent use:

Hacendado, da. p.p. de hacendar.2. adj. Que tiene hacienda en bienes raíces, y comúnmente se dice sólo del que tiene muchos de estos bienes. .. 3. Argentina y Chile. Dícese del estanciero que se dedica a la cría de ganado. Real Academia Española Diccionario - 1992, p. 763

Considering the will of the Respondent in registering and using a domain name containing this word, it is obligatory to take into account that the word "hacendado" is a generic word in the Spanish language, and that for it meaning should be associated by the public more with something related with the possession of lands and buildings than with any other thing. Also in areas of the world where the Spanish is not the official language -as for example California State where the Registrar is based- the family of words coming from the verb "hacendar" are familiar to the public (for example, "Hacienda Heights" it is the name of a Californian town).

Absent a probe by the Complainant of circumstances evidencing bad fait, the Panelist shall conclude that the Respondent choose the domain name not to take profit of the trademark of the Complainant but to "making profit from (the) descriptive character of this domain name"(Footnote 1). Other should be the presumption if the trademark of the case were a fantasy word or an special combination of common words, making implausible other cause of election as domain name than the purpose of refer to the trademark owned by a third party.

The fact that the Respondent lives in the same city where the Complainant have an important number of supermarkets exhibiting and selling products distinguished with the "private label" registered by the Complainant as trademark, does not change the appreciation of the facts by the Panelist. First, because a "private label" is precisely the opposite of a notorious trademark and it is acceptable the affirmation of the Respondent about that he was "unaware of the use of HACENDADO as Complainant’s trademark". Second, because there are not any obligation by the Internet users of avoiding the use of trademarks as domain names: the sole obligation that the Policy established is the one of not making abusive use of trademarks as domain names. If an Internet user is attracted by a common word ("sun", "yachting", "flower", "lawyer", etc.) that she or he know that it is used by one or by hundred of third parties as trademark, and acting with good will, she or he register this common word as a domain name, they are acting between the limits of her or his rights, out of the relatively narrow area of "abusive registrations" covered by the Policy. So the eventual knowledge by the Respondent of the Complainant trademarks (circumstance not proved by the Complainant and expressly denied by the Respondent) should not be in any way per se an evidence of bad will.

To examine the existence of good will or bad faith, it is advisable to review the parties allegations about the circumstances mentioned in the non-exhaustive list of bad faith evidence enclosed in the four paragraphs of section 4.(b) of the Policy:

The Complainant has not probed that the aim of the Respondent in registering the domain name was to "selling, renting, or otherwise transferring the domain name registration to the complainant .. for valuable consideration in excess of .. (the) .. documented out-of-pocket costs directly related to the domain name".

The Complainant affirms that its part approaches the Respondent making an offer to buy the domain name but no element evidence that the Respondent took profit of the contact to ask for an amount out of proportion with the "out-of-pocket costs directly related to the domain name".

The Panelist does not find proved that the Respondent have "registered the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name" nor that the Respondent is "engaged in a pattern of such conduct". The Complainant consider "implicit" the purpose of the Respondent of "impeding the normal development of its online activities" but no element in the case shows that this purpose really exist.

The Policy alluded to an active and deliberate obstructive conduct nor to the mere registration of an isolated domain name. An evidence of bad will aimed to prevent the use of the trademark as domain name could be the registration of a fantasy trademark or of a trademark formed by an special combination of common words, or the registration of multiple domain names with variations of a trademark containing a common word (there are different examples of this misconduct in previous cases of the Center) and the repetition of this conduct in prejudice of different trademark owners could evidence a "pattern of conduct". These circumstances were not probed in the case and -according to the characteristics of the relationship between the parties that arisen from the documentation- the registration by the Respondent of the domain names <circuitodecheste-dom.com> and <circuitoricardotormo-dom.com> can not be considered as evidence of the conduct described by paragraph 4.(b)(ii) of the Policy in prejudice of a third party.

The Complainant and the Respondent acts in completely different professions and sectors of the market, not being in consequence "competitors" the one of the other.

The generic nature of the word "hacendado" makes it difficult to accept that it mere use as domain name could per se (in absence of bad will maneuvers as the use of suggestive meta tags or deceptive content) "attract .. Internet users (looking for the Complainant private label products) to a web site" nor create "a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site".

It is true that in the unusual event that a consumer of the private label products distinguished by the HACENDADO trademark were trying to connect the Complainant entering <hacendado.com> as "address" in a navigation tool would reach an Internet location of a different owner and with different content, but this is a normal risk that shall accept those using generic terms as trademarks and those that do not takes the necessary measures to be the first in coming to a registrar applying for the generic term as domain name, to be also the first served with this domain name (Footnote 2).

The UDRP is a mean to restore balance and equity when the "first comes and first served" registered and used the domain name with bad will, abusing of the right of a trademark owner. If this bad will it is not proved by the trademark owner (that as per the Policy have the burden of proof) the mere coincidence between the trademark and the domain name does not serve as basis for a domain name transference or cancellation claim.

Because of this, the Panelist arrives to the conclusion that the Complainant has not probed that the Respondent has registered and used the <hacendado.com> domain names with bad faith. Therefore, the requirement of Paragraph 4.a.(iii) is not met.

Section 15, paragraph e) of the Rules require that once rejecting the complain the panels in certain cases include in the Decisions a declaration about the eventual Complainants bad will. Notwithstanding that this declaration it is not obligatory, for better understanding the Panelist manifests that he does not consider that in the present case the Complainant acted with bad faith or that abused of the administrative proceeding.

Said that, the Panelist shall manifest that the use by the Complainant as evidence of a Whois report were the name of the Respondent is confused with the ones of different homonymous was motive for reflection once examining this point of the Decision. At the end, the Panelist conceded the Complainant the benefit of the doubt and accepted that there are not evidence of use of the document and the information contained in it with bad faith.

The Complainant has proved that the domain name is identical to its trademarks, but has not proved that the Respondent has no rights or legitimate interest in the domain name, and that the Respondent registered and used the domain name in bad faith. Therefore, according to Paragraph 4.(i) of the Policy, the Panel denied the relief sought by Complainant with respect to the Domain Name <hacendado.com>.

Antonio Millé
Sole Panelist

Dated: May 16, 2001

Footnotes:

1. "Respondent’s explanation that it selected the domain name because it is the Spanish and Italian word for "book" appears prima facie acceptable. It is a fact that registrations of generic words have acquired considerable commercial value and represent an important asset in electronic commerce especially in a trade sector where product marketing through the Internet has become vitally important as it is for the book industry. Under these circumstances it is not likely that the Respondent has chosen the domain name with the intent to profit or otherwise abuse Complainant’s trademarks, but, in contrast, it appears reasonable to believe that the Respondent’s allegation that it has registered the domain name for making profit from descriptive character of this domain name is correct". LIBRO AG v. NA Global Link Limited Case No. D 2000-0186 http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0186.html. (back to text)

2. "Registration of a generic term as a domain name is possible under the ‘.com’ TLD and such domain names often have a significant commercial value. In contrast, a generic term cannot be monopolized as a trademark for the goods or services indicated by its common dictionary meaning". Notar Eiendom AS v. LIPnet Case No. D2000-1070 http://arbiter.wipo.int/domains/decisions/html/2000/d2000-1070.html. (back to text)