WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Klaukol S.A. v. Argentina Web Design S.R.L.
Case No. D2000-1776
1. The Parties
The Complainant is Klaukol S.A., a company based in Buenos Aires, Argentina, with its principal place of business located at Av. Eduardo Madero 1020, 5� piso, (C1106ACX) Buenos Aires, Argentina (the "Complainant"). Respondent is Argentina Web Design S.R.L., who resides at Beir� 4265, (1419) Buenos Aires, Argentina (the "Respondent").
2. The Domain Name and Registrar
The Domain Name at issue is . The Registrar is Network Solutions, Inc. (the "Registrar") of Herndon, Virginia, USA.
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received the Complaint of Klaukol S.A. on December 20, 2000 by email and on December 27, 2000 in hardcopy.
The Complainant made the required fee payment.
On January 4, 2001, the Center sent to the Registrar, a request for verification of registration data that was answered in January 5, 2001, when the Registrar confirmed, inter alia, 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 satisfies 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 Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), the Center on January 8, 2001, sent the Respondent a notification under Paragraph 2(a) of the Rules together with copies of the Complaint.
The Respondent did not answer to the Complaint, and in consequence the Center sent to the parties on January 30, 2001, the Notification of Respondent Default.
On February 1, 2001, after receiving his completed and signed Statement of Acceptance and Declaration of Impartiality and Independence, the Center appointed Mr. Antonio Mill� as the single member of the Administrative Panel (the "Panelist"). On the same date, the Center notified the parties of this appointment.
On February 5, 2001, the Panelist received via courier a complete copy of the Complaint and the corresponding enclosures.
4. Factual Background
The trademark upon which the Complaint is based is KLAUKOL. The Complainant attached copies proving that it registered this trademark in Argentina as follows:
May 20, 1987, class 6;
May 20, 1987, class 7;
May 20, 1987, class 9;
May 20, 1987, class 11;
May 20, 1987, class 12;
May 20, 1987, class 16;
May 20, 1987, class 17;
May 20, 1987, class 20;
May 20, 1987, class 21;
May 20, 1987, class 26;
August 5, 1988, class 2;
March 14, 1989, class 2;
March 14, 1989, class 5;
February 26, 1993, class 3;
February 26, 1993, class22;
February 26, 1993, class25;
February 26, 1993, class26;
July 30, 1993, class 5;
July 30, 1993, class 6;
July 30, 1993, class 6;
July 30, 1993, class 7;
July 30, 1993, class 7;
July 30, 1993, class 8;
July 30, 1993, class 9;
July 30, 1993, class 10;
July 30, 1993, class 11;
July 30, 1993, class 11;
July 30, 1993, class 12;
July 30, 1993, class 12;
July 30, 1993, class 16;
July 30, 1993, class 17;
July 30, 1993, class 20;
July 30, 1993, class 20;
July 30, 1993, class 21;
July 30, 1993, class 21;
July 30, 1993, class 21;
July 30, 1993, class 22;
July 30, 1993, class 24;
July 30, 1993, class 28;
July 30, 1993, class 28;
July 30, 1993, class 35;
July 30, 1993, class 36;
July 30, 1993, class 37;
July 30, 1993, class 38;
July 30, 1993, class 39;
July 30, 1993, class 40;
July 30, 1993, class 41;
August 31, 1993, class 2;
August 31, 1993, class 4;
August 31, 1993, class 6;
August 31, 1993, class 16;
August 31, 1993, class 18;
August 31, 1993, class 22;
August 31, 1993, class 23;
August 31, 1993, class 31;
October 29, 1993, class 4;
October 29, 1993, class 14;
October 29, 1993, class 20;
January 31, 1994, class 9;
August 31, 1994, class 8;
August 31, 1994, class 11;
August 31, 1994, class 17;
August 31, 1994, class 28;
August 31, 1994, class 40;
August 31, 1995, class 17;
July 26, 1996, class 6;
July 26, 1996, class 7;
July 26, 1996, class 8;
July 26, 1996, class 11;
July 26, 1996, class 16;
July 26, 1996, class 20;
July 26, 1996, class 22;
July 26, 1996, class 24;
July 26, 1996, class 28;
June 18, 1997, class 6;
December 12, 1997, class 9;
April 3, 1998, class 6;
April 3, 1998, class 7;
April 3, 1998, class 9;
April 3, 1998, class 11;
April 3, 1998, class 12;
April 3, 1998, class 16;
April 3, 1998, class 17;
April 3, 1998, class 20;
April 3, 1998, class 21;
April 3, 1998, class 26;
April 30, 1998, class 21;
April 30, 1998, class 42;
June 9, 1998, class 2;
June 9, 1998, class 3;
June 9, 1998, class 14;
June 9, 1998, class 17;
June 9, 1998, class 27;
June 9, 1998, without class indication; and
September 22, 1998, without class indication.
The Complainant also provide evidence of having registered in Argentina trademarks totally or partially containing the phoneme "klaukol" or related phonemes, as:
PASTINA KLAUKOL
NEOTAK KLAUKOL
KLAUKOL OBRA
KLAUKOL IMPERMEABLE
KLAUKOL AL SERVICIO DE LA CONSTRUCCION
KLAUKRET
KLAUSITA
KLAUKURU
KLAU
KOL
KO
Other copies attached to the Complaint proves that the Complainant also registered KLAUKOL trademark in Bolivia and Uruguay.
The Complainant asserts that it is "a leading firm in the construction materials industry in Argentina and South America" and that "the trademark "Klaukol" .. is extremely well known in Argentina and other South American countries, not only in the building industry, but also among ordinary people. Klaukol, as a trademark, appears in TV commercials, advertisements in newspapers and magazines, billboards in the streets and in football stadiums, etc.".
The Complainant also affirms that its party "sent a registered letter to the Respondent requesting him to withdraw the registration of the Domain Name, in order to allow the Complainant to register the Domain Name", the Complainant affirms, the letter was not answered by the Respondent. As per the Complaint, due to this lack of response, the Complainant called by phone "Respondent�s administrative contact � to the telephone number that appears in the Whois database" receiving as response from this person that "he was looking for the Complainant to pay him in order to obtain the withdrawal of the Domain Name".
5. Parties' Contentions
5. 1 Complainant contends that:
(a) the Respondent had slavishly copied the Complainant�s mark "Klaukol" to form the Domain Name .
(b) The Respondent lack of rights or legitimate interests regarding the trademark "Klaukol", as there are no trademarks similar to "Klaukol" registered by the Respondent under any trademark class in Argentina. Moreover, there is not any kind of activity done by the Respondent using the name "Klaukol", and:
(i) The Respondent has not used the Domain Name or a name corresponding to the Domain Name in connection to a bona fide offering of goods and services, and no one web site corresponding to the Domain Name is active at the present time.
(ii) The Respondent has not been commonly known by the "Klaukol" denomination, a very �uncommon� word.
(iii) The Respondent is not making a legitimate non-commercial or fair use of the Domain Name, because it�s not using the Domain Name at all.
(c) The Domain Name has been registered and is being used in bad faith, because:
(i) It is a �Notorious Trademark�, according to Section 6 bis of the Paris Convention.
(ii) Respondent has also registered many other Domain Names similar to trademarks notorious in Argentina, an this pattern of conduct was taken into consideration by a previous decision in the Case N� D2000-0914.
(iii) The Respondents aim consist of preventing the owner of a trademark from reflecting such trademark in the Internet, thus offering the transfer of the registered Domain Name for a profit, and has registered the Domain Name in order to prevent Complainant from reflecting its marks in the corresponding Domain Name, unless Complainant pays to purchase or rent the Domain Name from Respondent.
(iv) Another fact that corroborates that the Respondent is acting in bad faith, is the fact that the Domain Name does not resolve to an active website or other on-line presence
(v) Respondent's conduct is in violation of Argentinean trademark law.
5.2 Respondent did not answer to the Complaint:
Duly notified of the Complaint, the Respondent did not answer to it.
6. Discussion and Findings
The Policy sets out in Paragraph 4(a) the cumulative elements that shall be proved by the Complainant in order to succeed in an administrative proceeding for abusive Domain Name registration. We will examine each one of these elements in the following points:
"4.a.(i) Identity or Confusing Similarity"
Being that the particle "com" is an attribute of the gTLD, common to all the Domain Names under this TLD, it is beyond question that the trademark KLAUKOL is identical to the Domain Name . Therefore, the requirement of Paragraph 4.a.(i) is met.
"4.a.(ii) Absence of Respondent Rights or Legitimate Interest in the Domain Name"
"KLAUKOL" is not part of the corporate name of the company registering the Domain Name. The Respondent has not answered the complaint giving any basis to a right or legitimate interest in respect to the use of the phoneme "klaukol" as a Domain Name.
On this basis, the Panelist concludes that the Respondent has no legitimate interest in the Domain Name . Therefore, the requirement of Paragraph 4.a.(ii) is met.
"4.a.(iii) Respondent Registration and Use of the Domain Name in Bad Faith"
The Complainant based the Complaint on the existence of the circumstances set out in paragraph 4.b.i) of the Policy regarding the registration and use of the domain name in bad faith. In consequence, our analysis will be focused in this point.
Being "Klaukol" a fantasy denomination without signification in the Spanish language, nor in any other language known by the Panelist, one can not imagine a legitimate reason that could drive the Respondent to choosing this denomination as a Domain Name. The Panelist is then forced to conclude that the reason for that choice was the intention to use as a Domain Name the trademark and corporate name of a well known company. Therefore, the Domain Name registration was performed in bad faith.
To appreciate the good or bad faith of the present use of the Domain Name, the Panelist introduced the address "" in his Internet navigator, receiving the message that the page can not be displayed. No offering of the Domain Name for sale appeared, nor any links to other pages. Notwithstanding, the evidence of routine registration of Domain Names by the Respondent, coinciding with well known Argentinean trademarks, and the fact that the Respondent does not refute this evidence, nor the imputation of an intention to sell or rent the Domain Name, that the Complainant clearly and specifically includes in the Complaint, force the Panelist to consider that in this case exists "circumstances indicating that the Respondent has registered the Domain Name primarily for the purpose of selling, renting or otherwise transferring the Domain Name registration to the Complainant or to a Complainant's competitor for valuable consideration". This conclusion is confirmed by the lack of allegation by the Respondent about the existence of any of the circumstances listed in paragraph 4.c. of the Policy to demonstrate its rights or legitimate interest to use the Domain Name.
Because of this, the Panelist arrives at the conclusion that the Respondent has registered and used the Domain Name in bad faith. Therefore, the requirement of paragraph 4.a.(iii) is met.
Legal basis of the Decision
The Complainant invoked the Argentinean Trademark law and Argentinean Case Law precedents in support of its position. However, the Panelist considers that the case shall be resolved taking into consideration only the Policy's principles (Footnote 1), even though the Argentinean legislation, country were the Complainant and the Respondent have their domicile, and the applicable international law principles, corroborate the Decision.
7. Decision
Complainant has proved that the Domain Name is identical to it trademark, that Respondent has no rights or legitimate interest in the Domain Name, and that Respondent registered and used the Domain Name in bad faith. Therefore, according to Paragraph 4.i of the Policy, the Panel requires that the registration of the Domain Name be transferred to the Complainant.
Antonio Mill�
Sole Panelist
Dated: February 9, 2001
Footnote:
1. See for example Case No. D2000-0164 Empresa Brasileira de Telecomunicações S.A. � Embratel v. Kevin McCarthy and Case No. D20000-1649 Rosa Montero Gallo v. Galileo Asesores S.L.
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