WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LUSOMUNDO � SOCIEDADE GESTORA DE PARCIPAçOES SOCIAIS, S.A. and LUSOMUNDO AUDIOVISUAIS, S.A. v. InmoSoria and Andr�s Ceballos Moscoso
Case No. D2000-0523
1. The Parties
The Complainants are LUSOMUNDO � SOCIEDADE GESTORA DE PARCIPAçOES SOCIAIS, S.A. and LUSOMUNDO AUDIOVISUAIS, S.A. two companies incorporated in Portugal and with head office at Avenida da Libertade, 266, Lisbon, Portugal (the "Complainants"), represented in this proceeding by Mr. Antonio Creus, Esq. and Mr. Albert Agustinoy, Esq., of Cuatrecasas Abogados, at Calle Vel�zquez 63, 28001, Madrid, Spain.
The Respondents are InmoSoria, an entity of an unknown legal nature, doing business in Arturo Soria 64, 1 C, Madrid, Madrid 28027, Spain, and Andr�s Ceballos Moscoso, an individual with the same address as InmoSoria (both collectively the "Respondents"). In his response to Panel�s Procedural Order No. 1 Mr. Ceballos stated that both InmoSoria as well as himself are to be considered registrants of the domain name. There can be no prejudice to InmoSoria by this assertion, because Mr. Soria is the Administrative Contact for the registrant InmoSoria. This means that should InmoSoria be a legal entity distinct from Mr. Ceballos, InmoSoria would be authorizing Mr. Ceballos to make any representation or statement on InmoSorias� s behalf 1. As Mr. Ceballos has alleged to own individual rights to the domain name registration as a registrant while he is affirming that InmoSoria is also a registrant of the domain name, the Panel considers that both InmoSoria and Mr. Ceballos are to be considered the Respondents in this case. Should a "flag shop" mean a pseudonym or "nom-de-guerre", and InmoSoria be nothing but a "flag shop" for Mr. Ceballos 2, it is evident that he would have a right to be present before this Panel in this proceeding.
2. The Domain Name and Registrar
The domain name at issue is , registered with Network Solutions, Inc., of Herndon, Virginia 20170, USA (the "Registrar").
3. Procedural History
On May 30, 2000 a Complaint in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (the "Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules") was submitted by e-mail to the WIPO Arbitration and Mediation Center (the "Center"). On May 31, 2000 the Complaint was received by the Center in hard copy. On June, 19, 2000 the Center received an amendment to the Complaint dated June 15, 2000, with the specification of the registrar of the domain name.
On June 21, 2000 the Center sent to the Respondent a Notification of Complaint and Commencement of Administrative Proceeding.
At the Center�s requests of June 2, 2000 and June 15, 2000 to Verio and to Network Solutions, Inc., respectively, on June 20, 2000 the latter confirmed to the WIPO Center inter alia that the domain name at issue was registered with Network Solutions, Inc., that InmoSoria is the current registrant, and that the domain name is in "Active" status.
On July 9, 2000 a Response was submitted by Mr. Andr�s Ceballos Moscoso. On July 10, 2000 the Center acknowledged receipt of the Response.
After having received Roberto A. Bianchi�s Statement of Acceptance and Declaration of Impartiality and Independence, on July 20, 2000 the Center appointed him as a Sole Panelist. The decision date was scheduled for August 2, 2000. Thus, the Administrative Panel finds that it has been properly constituted.
The Panel sharing the Center�s assessment of June 21, 2000, independently finds that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules, and that payment of the fees was properly made.
On July 20, 2000 the Administrative Panel issued Procedural Order No. 1. The Panel thereunder requested: a) The representatives of the Complainant(s) to clearly name as Complainant(s) the entity or entities initiating the complaint and seeking the remedy of transfer, and to specify whom should the requested remedy favor; b) Mr. Ceballos, to clearly state whether he is the registrant of the domain name or an assignee or licensee thereof, or whether he otherwise has rights to be present in this proceeding as the Respondent, and to comply with the requisite of certification pursuant to Rules, Paragraph 5(b)(viii). Both Parties were also requested to submit, in support of their assertions, any documentary or other evidence, pursuant to Rules, Paragraphs 4(b)(xv) and 5(b)(ix).
On July 24, 2000, the Complainants submitted by email the information requested in the Procedural Order. On July 25, 2000 Mr. Ceballos Moscoso submitted by email a response to the Procedural Order. Copies of both submissions were sent to the other party.
There were no other submissions, nor extensions granted or other orders issued.
The registration agreement for the domain name at issue has been done and executed in English by Respondent-Registrant InmoSoria and the Registrar Network Solutions, Inc. All of the Parties� submissions have been made in English, except for some exhibits in Portuguese and in English. The Panelist�s mother tongue is Spanish; he also reads Portuguese. No translations are therefore needed in this proceeding. Seeing the Panel no special circumstances to determine otherwise, as provided in Rules, Paragraph 11, the language of this proceeding is English.
4. Factual Background
The Panel finds that the following facts, extracted from the Parties� submissions with exhibits and undisputed, are sufficiently established:
Lusomundo is a multimedia group of businesses, involving film exhibition and distribution, newspapers advertising, radio advertising, magazines, book publishing, tv distribution, leisure centers, press distribution, printing facilities, newspapers, videogames, and video. The group is moving to become a leading Portuguese content provider for the Internet. Lusomundo SGPS, S.A. is the 100 % owner of Lusomundo Audiovisuais SGPS, S.A., which in turn owns Lusomundo Audiovisuais, S.A.
The Warner Lusomundo Multiplex Circuit in Spain comprises 5 multiplex, with a total of 42 screens. In 1999 3.1 million viewers visited the multiplex cinemas. Two of the multiplex facilities are located in the Madrid area: La Moraleja with 8 screens, and Majadalahonda, with 12 screens.
Filmes Lusomundo, SARL was the original registrant of the Portuguese national trademark registration LUSOMUNDO, No. 232.872 before the Portuguese INPI � National Institute of Industrial Property . Application December 20, 1985. Registration November 28, 1991. The name of the original registrant was changed to Lusomundo � Sociedade Gestora de Participaçoes Sociais, SGPS, S.A. on November 4, 1999. On the same day the trademark registration was transferred to Lusomundo Audiovisuais, S.A. The mark covers "talking pictures" of the class 9.
On April 29, 1999 InmoSoria, an entity of an unknown legal nature, doing business at Arturo Soria 64, 1 C, Madrid 28027, Spain, registered with Network Solutions, Inc. The WHOIS record shows that the Administrative and Billing contact is Mr. Andr�s Ceballos, with the same address as the registrant.
On an unclear date 3 printed on a seal whose xeroxcopy does not allow to ascertain the corresponding year, Lusomundo Audiovisuais, S.A. applied before the Brazilian INPI for the registration of the trademark "L LUSOMUNDO" (the letter "L" and the word "LUSOMUNDO" design) covering "movie films, videograms, phonograms, audiovisual products for distributing via electronic media", Application No. 822324881.
On July 8, 1999, Lusomundo Audiovisuais, S.A., applied before the Portuguese INPI for registration of the logotype "L LUSOMUNDO" (design) No. 31605 T Code 2099, for commercial and industrial use.
On October 7, 1999, Lusomundo Media, SGPS, S.A. registered the domain names and with the registrar .
On April 4, 2000 Mr. Andr�s Ceballos Moscoso of INMOSORIA sent a fax to Mr. Albert Agustinoy of Cuatrecasas Abogados with subject: "Domain ". It refers to "our last phone conversation" . Mr. Ceballos confirms the following conditions on which a fast agreement could be reached for transfer of rights on the domain to Mr. Agustinoy�s client: a cash payment of Pesetas 3,000,000.00, and the signature of an agreement if favor of C&T for Internet developments on behalf of the assignee of the domain name or an associate business. The value of the contract should be Pesetas 10,000,000.00, value added tax excluded. Such developments would be made at market prices and with the quality and warranty already known by Mr. Agustinoy. The term of the developments would be flexible, following the needs of Mr. Agustinoy�s client.
5. Parties� Contentions
5.1 Complaint
The Complainant asserts that:
The domain is totally identical to the trademark "LUSOMUNDO". At the moment of the registration, the registrant was not guided by any legitimate purpose, i. e. the development of its commercial activities. The only goal of the registration was to sell the domain name to the Complainants. The business purpose of Inmosoria S.L. is real estate consulting and real estate brokerage. There is no relationship between Inmosoria�s activities and the name "LUSOMUNDO". Inmosoria never used the latter. Inmosoria never had any right to the trademark "LUSOMUNDO". Instead, Lusomundo � SGPS, S.A. is the only holder of such rights. Consequently, Respondent has no right at all on the "LUSOMUNDO" domain name. Inmosoria registered with the sole purpose to force Lusomundo � SGPS, S.A. to negotiate with the Respondent in order to acquire the domain name corresponding to the "LUSOMUNDO" mark. The fax included in annex 5 evidences the will of Inmosoria to impede the use of by the holder of trademark rights until the latter does not pay pesetas 3,000,000.00 and enters a contract valued Pesetas 10,000,000.00 with C&T, Inmosoria�s partners. The domain name registration by the Respondent was not a coincidence. Registration occurred when Respondent first knew of Lusomundo Group was about to purchase a business premise for a "Metroplex" movie theatre. Since the moment of registration, Respondent has not included any contents on the corresponding web page. Only an "under construction" presentation is showed with a graphical presentation by Verio. Respondent has adopted a passive attitude regarding that web page. Article 1282 of the Spanish Civil Code is applicable to this case, according with the decision issued in WIPO Case D2000-0018. In a free translation, that article states that, "in order to judge the contracting parties� intentions, it shall be taken into account their acts, during and after the contract". Inmosoria, by registering the domain name, was impeding the use on the Internet of the most important mark for an international company such as LUSOMUNDO � SGPS, S.A. In previous WIPO cases panels decided that the passive use of a web page may be considered as a use in bad faith.
5.2 Response
Mr. Ceballos Moscoso in his Response alleges that: He is the owner of 4. It is inadmissible to contemplate any kind of complaint addressed to a person who is not the holder of the right now in question. The Complainant has no exclusive rights, either in Spain or, presumably in the other UEE countries (Portugal excepted) on the brand name LUSOMUNDO. In a certificate issued by the Spanish Office for Patents and Trademarks it is shown that LUX-O-MUR is the only mark which can have any connection with the mark under question. Even if there were rights in Spain on the LUSOMUNDO � which is not the case � the mark deserves no special protection, as no steps have been taken in order to guarantee its protection. In the village of Verin, Ourense, Spain, there is a bar whose name is LUSOMUNDO. LUSOMUNDO represents only 17 % of the name of the complaining company "LUSOMUNDO � SOCIEDADE GESTORA DE PARTICIPAçOES SOCIAIS, S.A.". This makes this case very different from other WIPO cases like or the , where the brand name represented the totality of the domain name registration. There is no bad faith use by the fact that the domain name is not being used. There would be bad faith if the pages had shown aggressive or harmful content referring to Complainant�s activities or competition with obvious pornographic contents. Andr�s Ceballos Moscoso never had anything to do with the company which promoted the shopping mall referred to by the Complainant. The contact between Mr. Agustinoy and Mr. Ceballos Moscoso was initiated by the law firm Cuatrecasas. Now they seem to have found the demand excessive, but that does not affect the essence of the complaint. Neither Inmosoria S.L. nor Mr. Ceballos Moscoso own any shares in C&T, the beneficiary of the proposed contract mentioned in the Complaint. Mr. Ceballos is a small collaborator in this firm with the job of looking for work to develop in the Internet Network. At the time the Complainant registered , it did not registered because the Complainant had no intention of spread widely his activities on Internet. The complainant now wants and needs the use of the domain . Because the complainant was unable to forecast in the long term, Mr. Ceballos Moscoso has not to pay for it.
6. Discussion and Findings 6.1. Independent Connection with the Respondent�s Web Site
The Panel considers that it has powers under Rules, Paragraph 10(a), to independently visit the Internet in order to obtain additional light in a proceeding. On the same day of its appointment, July 20, 2000, the Panel visited at http:// www. the web site of the Respondents. The connection resulted in an only screen which reads:
" Welcome to my Future Website We registered our Domain at Verio Powered by Verio". The page also includes some links: "Register a domain name", "Get eCommerce", "Host a web site", "Design a website", "Promote your website", "Free Domain Name Monitoring", "Get your Internet Keyword", and "Dedicated Servers". A banner reading "got domain? VERIO the new world of business" is also shown.
6.2. Identity or Confusing Similarity
As established under 4 above, one of the Complainants, LUSOMUNDO AUDIOVISUAIS, S.A. is the owner of the trademark "LUSOMUNDO". The Panel cannot afford any weight to the Respondent�s contentions that such trademark is not protected in Spain because it would lack the character of a well known mark. The present ICANN proceeding deals with a domain name identical or confusingly similar to a trademark in which a Complainant has rights. The Policy does not require that the mark be famous, well known, or renowned. Nor does the Policy request an universal trademark registration.
Apart from that fact, the Panel considers that: Portugal and Spain are neighboring countries. The Spanish and Portuguese languages are very closely related. Many Portuguese words have the same spelling as Spanish words with the same meaning. This applies specially to "LUSOMUNDO". LUSOMUNDO is a fantasy word combining the Spanish and Portuguese words "luso" and "mundo". According with the Diccionario de la Lengua Española of the Royal Spanish Academy, 1992 Edition, "luso" or "lusitano" "is said of a Pre-roman people in Lusitania, a region of the ancient Hispania that comprised the whole of the present Portuguese territory south of the Duero River and part of the Spanish Extremadura. Also used as a substantive". A related meaning according with the same dictionary is "natural of Portugal" or "pertaining to Portugal". "Mundo" is the Spanish word for "world". Accordingly, no Spanish-speaking person living in Spain could reasonably ignore the sound and meaning of "LUSOMUNDO". The Lusomundo Group in association with Warner owns and exploits a Multiplex circuit in Spain with 5 multiplex premises, two of them in La Moraleja with 8 screens and Majadalahonda with 12 screens, both in the Madrid area, which is the area where Inmosoria, the registrant of the domain name, is doing business, as well as the area where Mr. Ceballos Moscoso, its administrative and billing contact, has his address. This means that both InmoSoria and Mr. Ceballos were most likely informed by the press that "Lusomundo" is a movie film exhibitor in their area, specially when considering that twenty cinemas owned by the Complainants are usually displaying their advertising on the Madrid�s newspapers and/or other media. This fact make unnecessary that the Panel examines opposing Complainants� allegations and Respondents� denials about the relationship between the Respondents and the real estate developer who had knowledge of the Complainants� projects of acquiring business premises for a movie theatre in a shopping mall. Mr. Ceballos Moscoso himself has submitted in his Response an Exhibit with a xeroxcopy of a page of the newspaper "El Pa�s" from June 23, 2000. The exhibit shows an advertising of the movie "Gladiator". Several cinemas exhibiting that movie are therein listed. Two of them indisputably belong to the Complainants: Majadalahonda� s Lusomundo, and La Moraleja�s Lusomundo. This equals to a confession by Mr. Ceballos that he has actual notice that the Complainants Lusomundo own and exploit movie exhibition under the service mark "Lusomundo" in the Respondent�s area of activity.
For the above reasons the Panel finds that the mark LUSOMUNDO was most likely known by the Respondents at the moment of registration, and that the Complainant Lusomundo Audiovisuais, S.A. having rights to the mark, does qualify to initiate a complaint under Policy, paragraph 4.
The Panel cannot afford any weight to Mr. Ceballos� argument that the domain name registration and the trademark referring to "Lusomundo" represent only 17 % of the name of the Complainant "LUSOMUNDO � SOCIEDADE GESTORA DE PARTICIPAçOES SOCIAIS, S.A.". The Panel considers that the Complaint is not based on rights on the name of the companies, but instead on rights in a trademark whose owner is one of the complainants, LUSOMUNDO AUDIOVISUAIS, S.A.
Therefore the Panel finds that the domain name is identical or, having in mind the addition of ".com", at least confusingly similar to the trademark "LUSOMUNDO" of one of the Complainants.
6.3. Rights and Legitimate Interests in the Domain Name The Panel has considered the allegation by the Complainant as to the lack of rights or legitimate interests of the Respondent. The Respondent Mr. Ceballos did not submitted any allegation that either InmoSoria or Mr. Ceballos himself have any rights or legitimate interests in the domain name. In particular, the Respondents have failed to evidence any bona fide use of the domain name or a noncommercial use of the domain name. Respondents have not evidenced that any of them has been known by the domain name or by a name relating to the domain name. Nor have they evidenced any other circumstance under Policy, Paragraph 4(c), which could eventually have served them to rebut Complainants� allegations under Policy, Paragraph 4(a)(ii). The independent connection under 6.1. above shows that the Respondents� only use of the domain name is the posting of an "under construction" page on the corresponding web site. Mr. Ceballos may be right when he states that "thousands upon thousands are exactly in the same situation" (i.e. not using the domain names they registered). However the Panel considers that by not using the domain name � other than by posting an "under construction" legend � a registrant renounces to a very important means of proving that he might have rights or legitimate interests on the domain name.
Such failure of the Respondents in evidencing favorable circumstances, together with the clear assertion that the Respondent lacks rights to or legitimate interests in the domain name at issue, leads the Panel to conclude that the Complainants have met their burden pursuant to Policy, Paragraph 4(a)(ii).
6.4 Registration in Bad Faith
It is undisputed that there has been a contact between Mr. Ceballos and the Complainants�attorneys. It is immaterial which of the Parties did in fact initiate such contact, because the Respondents lacked any rights or legitimate interests to the domain name at issue. See 6.3. above. During such contact Mr. Ceballos asked for the transfer of the domain name a sum that indisputably exceeded any documented out-of-pocket costs related to the domain name. The total amount of the demand for the transfer of the domain name was Pesetas 13,000,000.00.
Following the contact Mr. Ceballos confirmed his demand. See under 4 above the text of the fax sent on April 4, 2000 by Mr. Ceballos Moscoso to Mr. Agustinoy, the Complainants� representative.
It is also immaterial whether one part (Pesetas 10,000,000.00) of such sum was the value of a contract to be entered by the Complainants and C&T an entity in which allegedly neither Inmosoria nor Mr. Ceballos have shares. Under Policy, Paragraph 4(b)(i) no distinction is made among the beneficiaries of the consideration requested by the domain name holder to the trademark owner. Construing Policy, Paragraph 4(b)(i) in a different way would allow any bad faith registrant to escape the consequences of a bad faith registration by simply demanding the illegal consideration not on its own behalf, but in another person�s name.
Absent any Respondent�s rights or legitimate interests in the domain name, the Panel must conclude and find that the registration of the domain name at issue was made by the Respondents Inmosoria and Andr�s Ceballos Moscoso � the latter acting either on its own behalf or as the Administrative and Billing Contact for the Registrant - "primarily for the purpose of selling (...) or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark (...) for valuable consideration in excess of (the Respondents�) documented out-of-pocket costs directly related to the domain name", which is an evidence of the registration and use of a domain name in bad faith under Policy, Paragraph 4(b)(i).
The Panel therefore finds that the Complainants have met their burden in showing that the Respondent registered the domain name in bad faith as required under Policy, Paragraph 4(b)(iii).
6.5. Use in Bad Faith
Apparently, aside from its posting of an "under construction" page, and the offering for sale of the domain name to the trademark owner, Respondents have not made any other use of the domain name. The Panel considers that such a passivity cannot favor the Respondents, specially when considering WIPO Case D2000-0003 Telstra Corporation Limited v. Nuclear Marshmallows. The Panelist in that case, Mr. Andrew F. Christie, gave an important criterion for a Panel to establish bad faith use:
"The relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. The distinction between undertaking a positive action in bad faith and acting in bad faith may seem a rather fine distinction, but it is an important one. The significance of the distinction is that the concept of a domain name �being used in bad faith� is not limited to positive action; inaction is within the concept".
Telstra, 7.9.
After the fact of registration the Respondents� conduct was far from any use in good faith. During the contact with the Complainants, a group that owns in Spain and specially in the Madrid area several Multiplex movie theaters under the tradename Lusomundo, the Respondents attempted to sell for profit a domain name that was identical to the LUSOMUNDO trademark in which the Complainants have rights. By so doing the Respondents were also obstructing the access to the Web to the Complainants under a web site that reflects its trademark. The goal of this obstruction is clear for this Panel: to unfairly force the Complainants to negotiate transfer for price at a profit. This is precisely the kind of conduct that the Policy disavows.
For the above reasons, the Panel finds that the domain name at issue is being used in bad faith.
7. Decision
The Panel has found that the domain name is identical, or at least confusingly similar, to the trademark of the Complainant LUSOMUNDO AUDIOVISUAIS, S.A., and that the Respondents have no rights to or legitimate interests in said domain name. The Panel has further found that the domain name has been registered in bad faith, and is being used in bad faith.
Therefore, pursuant to Policy, Paragraph 4(i) and Rules, Paragraph 15, the Administrative Panel requires that the registration of the domain name be transferred to the Complainant LUSOMUNDO AUDIOVISUAIS, S.A.
Roberto A. Bianchi
Presiding Panelist
August 2, 2000
Footnotes:
1. According with Network Solutions� glossary, a "registrant" is an individual or organization that "holds the right to use that specific domain name for a specified period of time"; "this person or organization is the �legal entity� bound by the terms of the Service Agreement". The administrative contact/agent is an individual authorized to interact with Network solutions on behalf of the domain name registrant, and should be able to answer non-technical questions about the domain name�s registration and the domain name registrant. "It is strongly recommended that the administrative contact/agent b the registrant or someone from the registrant�s organization". "The billing contact is the person designated to receive the invoice for domain name registration and re-registration fees". See "http//cgi-bin/glossary/lookup".
2. See Footnote 4 at page 5.
3. The Panel was not able to read the year corresponding to the "December 14, 10:27 " filing seal of the Brazilian INPI. There is no specification in the Complaint about this fact.
4. Mr. Ceballos literally states: "The complaint has been erroneously addressed. Andr�s Ceballos Moscoso, owner over the rights of has any kind of relation with the Respondent (IMOSORIA, S.L. or INMOSORIA, S.A.)". This unclear assertion led the Panel to issue Procedural Order No. 1 on July 20, 2000, the very day of the reception by the Panel of the Center�s email of July 20, 2000 which forwarded the parties� submissions without attachments. See 3, "Procedural History". On July, 23, 2000, in his answer to the Panel�s requests, Mr. Ceballos stated: "1. Andr�s Ceballos Moscoso, a (sic) individual person, is the legal owner over the rights of the domain . 2. The registrant is also Inmosoria. Andres Ceballos Moscoso. As I have explained Inmosoria is a name, a �flag shop� used by Andr�s Ceballos Moscoso in his professional activities since 1989. This fact has been proved by documentation sended (sic) to WIPO".
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