WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bodegas Pomar, C.A. v. Jaime Renter�a
Case No. D2000-1808
1. The Parties
The complainant is BODEGAS POMAR, C.A., a company organized and existing under the laws of the Bolivarian Republic of Venezuela with headquarters at 2da Avenida de Los Cortijos de Lourdes, Edificio Centro Empresarial Polar, Caracas, Venezuela (the "Complainant"), represented in this proceeding by Mr. Ricardo Antequera Parilli, Esq. and Mr. Ricardo Antequera Hernandez, Esq., of Antequera, Parilli Rodriguez & Asociados Law Offices, Caracas, Venezuela.
The respondent is Mr. Jaime Renter�a, an individual person who according with the WHOIS database, has an address at Avenida Urdaneta, Edificio Plaza, Esquina La Pelota, Piso 2, Oficina 2-3, Caracas, DF 1010, Venezuela (the "Respondent").
2. Domain Names and Registrar
The domain names at issue are , , , and , all five of them registered with Network Solutions, Inc. ("NSI), of 505 Huntmar Park Drive, Herndon, Virginia, USA.
3. Procedural History
On December 26, 2000 a complaint according with the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy") and its Rules was submitted to the WIPO Arbitration and Mediation Center (the "Center") in electronic format. On
January 4, 2001 the complaint was received in hard copy. Receipt of the complaint was acknowledged by the Center on December 29, 2000. Following a notification of complaint deficiency by the Center, on January 16, 2001 the complaint was amended in electronic form, and on January 19, 2001, in hardcopy. On January 8, 2001, at the Center's request of January 5, 2001, the registrar NSI confirmed that the domain names at issue were registered in the Respondent's name, as well as other record details.
On January 22, 2001 the complaint and the commencement of the administrative proceeding were notified by the Center to the Respondent. The deadline for the submission of the response was set for February 10, 2001. The Notification of Complaint included following paragraph:
"6. Default. If your Response is not sent by the above date, you will be considered in default. We will still appoint an Administrative Panel to review the facts of the dispute and to decide the case. The Administrative Panel will not be required to consider a late-filed Response, but will have the discretion to decide whether to do so and, as provided for by Rules, Paragraph 14, may draw such inferences from your default as it considers appropriate. There are other consequences of a default, including no obligation on our part to consider any designations you have made concerning the appointment of the Administrative Panel or to observe any guidelines you have provided concerning case-related communications."
Having failed to submit a response, the Center sent to Respondent a Notification of Respondent Default in electronic form on February 13, 2001 .
After having received Roberto A. Bianchi�s Statement of Acceptance and Declaration of Impartiality and Independence, on February 19, 2001 the Center appointed him as a sole panelist. The scheduled decision date was set for March 4, 2001. Thus, the Administrative Panel finds that it has been properly constituted.
On February 19, 2001 the case file was electronically transmitted to the Panel. The case file in hardcopy arrived at the panelist's office on February 23, 2001. The Panel independently agrees with the Center's assessment that the complaint is in formal compliance with the Policy, the Rules and WIPO�s Supplemental Rules.
There were no other submissions by the Parties. No orders were issued. There were no extensions.
The registration agreement between Respondent and NSI was executed in English. The complaint was submitted in English. The Panel, seeing no special circumstances to determine otherwise, decides that the proceeding shall continue in English (Rules, Paragraph 11).
4. Factual Background
The following facts and circumstances, contended by Complainant or included in the annexes to the complaint, and undisputed by the defaulting Respondent, are established:
BODEGAS POMAR is a winemaker company existing since 1986, resulting from the association of the business groups "Empresas Polar" of Venezuela and the French "Casa Martell". Bodegas Pomar, C.A. is part of a group of companies gathered under a holding company called Empresas Polar, C.A. This winery has since developed various wines identified with several trademarks. The POMAR expression is formed out of the names of the Complainant�s owning companies POLAR and MARTELL.
BODEGAS POMAR is a well-known trademark among the general public in Venezuela, and of regional recognition as an important company engaged in the production and commercialization of wines for national and international consumption. The Venezuelan Trademark Office, according with a certification issued on
October 11, 1996, confirmed a resolution dated September 1, 1995, which declared "BODEGAS POMAR" a notorious trademark.
Additionally, Complainant has exclusive rights on the trade name "BODEGAS POMAR". Under Decision 344 of the Andean Community of Nations, which establishes the common provisions on industrial property for the countries parties to the Cartagena Agreement, the protection for trade names is similar to that recognized to service marks or trademarks.
Complainant is the owner in Venezuela of the following trademark and service mark registrations and applications:
"POMAR" TRADEMARKS IN VENEZUELA
Registration
Trademark
International Class
Application No. /
Registration No.
Date
Expiration Date
N-35329
Bodegas Pomar (E-D)
43 (Footnote 1)
1994-7008
1996
2006
Bodegas Pomar
43
1991-16600
Bodegas Pomar
33 (former 47 national)
1988-5461
Bodegas Pomar
33 (former 47 national)
1988-10730
Pomar
33 (former 47 national)
1991-17393
Bodegas Pomar
(E-D)
35
1994-7009
Bodegas Pomar (E-D)
39
1994-7010
Bodegas Pomar
(E-D)
42
1994-7011
Bodegas Pomar
(E-D)
16
1994-7012
Bodegas Pomar (E-D)
21
1994-7013
Bodegas Pomar
33
1994-7014
Additionally Complainant owns the following trademark and service mark registrations in Colombia, Dutch Antilles, Ecuador and United States of America.
"BODEGAS POMAR" TRADEMARKS ABROAD
Registration
Trademark
International Class
Application No.
Expiration Date
Country
15835
BODEGAS POMAR
33
-
08-13-2002
Dutch Antilles
15834
BODEGAS POMAR
42
-
08-13-2002
Dutch Antilles
00062-92
BODEGAS POMAR
Trade Name
1872
03-09-2002
Ecuador
BODEGAS POMAR
33
334730
Colombia
144389
BODEGAS POMAR LABEL
33
334728
11-16-2003
Colombia
BODEGAS POMAR and Design
33
74/340,339
U.S.A.
Several wines produced by Complainant have been awarded international recognition.
According with the NSI WHOIS database as seen by the panelist on February 24, 2000, Respondent registered the , and domain names on June 17, 1999, and the and domain names on June 28, 2000. All of Complainant's trademark registrations in Venezuela pre-date Respondent's domain name registrations.
It is has been shown by Complainant and is undisputed that Respondent offered the domain names at issue for sale to Empresas Polar (one of the owners of Complainant�s company) on the following occasions:
- Letter of June 28, 1999. First contact made by the Respondent with EMPRESAS POLAR, enclosing "...a list of the worldwide Internet domain names, original to your company, made available to you by our company". The Panel after reading the letter's original text in Spanish notes that the phrase "originales de su compañ�a" has the meaning of "originally belonging to your company" or "originally owned by your company".
Mr. Renter�a describes his own intentions towards EMPRESAS POLAR as "transparent". A list with the following 20 domain names is enclosed: ,, , , , , , , , , , , , , , , , , y .
- Letter of June 28, 2000. A new letter where Respondent presents himself as responsible for a virtual store of Polar products on the Internet, demanding a price for all the domains, including the "virtual store", of US$ 580,000. The following list of domain names was enclosed: , , , , , , , , , ,, , , . According to Mr. Renter�a, these domain names have been re-directed to "virtual store". An e-mail from a
Mr. Luis Alvarez E. was included, where an interest in buying rights over is shown.
- Letter of that same date, adding new domains to the offer and stating: "These domains, being of first order, such as the case of and , are highly sought on the international market, making them commercially and strategically valuable for any company". The domain names are: , , , , bodegas- and . Respondent concludes by offering a "special price of US$ 80,000" for the six domain names.
- Letter of December 5, 2000, in which a special "40 % - off discount" is now offered for the sale of all 20 domain names at a total amount of US$ 348,000 (US$ 17,400 for each domain name). The full list of the enclosure to the first letter is repeated.
The Panel notes that the amount required by Respondent for the sale of each domain name at issue far exceeds any thinkable out-of-pocket registration costs.
5. Parties� Contentions
A) Complainant contends that the domain names are identical or similar to the extent of creating confusion in respect of the trademarks or service marks on which the complainant holds rights; that Respondent has no legitimate rights or interests in respect of the domain names; and that the domain names were registered and are used in bad faith, for the sole purpose of exerting pressure on the Complainant to accede to the sole aspiration of respondent, i.e., obtain a disproportionate economic benefit in exchange for the transfer of the domain names, knowing that these represent important corporate assets for the complainant.
The sole intention behind such registrations was obtaining an undue and unjust benefit at the expense of the complainant, abusing a dominant position obtained by registering the domain names at the first-level category (.com) most coveted to date by companies or private citizens wishing to take part, commercially, in the WWW. Other contentions of Complainant are referred to in 4 above.
B) Respondent is in default. In case of a default, under Rules, Paragraph 14(a), the panel "shall proceed to a decision on the complaint", and under Paragraph 14(b) the panel "shall draw such inferences therefrom as it considers appropriate". Such provisions would indicate that the Complainant�s assertions are sufficient ground for the Panel to proceed to a default decision in its favor. However the Policy does not allow to extract such an automatic consequence, because "the complainant must prove that each of these three elements are present" (Policy, Paragraph 4(a) in fine).
6. Discussion and Findings
Identity or Confusing Similarity
Complainant has rights on the POMAR and BODEGAS POMAR marks. The filings of their applications pre-date the registration of the domain names at issue. See 4 supra. A comparison between the domain names and Complainant�s marks results in a finding of near identity of and with the trademark BODEGAS POMAR, and of confusing similarity with the trademark POMAR. The comparison of with the trademark POMAR shows identity. The comparison between and with the trademark POMAR also shows confusing similarity. "RESERVA" is a word commonly used to mean a special type of wine quality, and POMAR is the word carrying the distinctive portion of the RESERVA POMAR expression. One of the wines produced by Complainant is RESERVA POMAR. Thus, Complainant has succeeded in showing that the first limb to be evidenced is present for all five domain names (Policy, Paragraph 4(a)(i)).
Lack of Rights and Legitimate Interests
Complainant contends that Respondent lacks rights or legitimate interests in the domain names. Respondent, by its default, has chosen not to present the Panel with any allegations or documents in its defense or favor despite its burden under Rules, Paragraph 5(b)(i) and 5(b)(ix). In particular, Respondent has failed to contend that any of the circumstances described in Policy, Paragraph 4(c) - or any other circumstance - is present in its favor.
An independent connection to the Web by this acting panelist was conducted on February 19, 2001, and delivered following results:
www. and www.bodegas resolved into a HTTP "403" message ("You are not authorized to see this page"). www., www.bodegas- and www. delivered a "the page cannot be shown" DNS-error.
This means that for all practical purposes the web sites under the five domain names at issue are not being used, or that Respondent is not providing access to the corresponding web pages to any Net surfer. Whatever the reason, this lack of use does not allow, by Respondent's default, to conclude anything favorable to Respondent, particularly in relation to the Policy, Paragraphs 4(c)(i) or 4(c)(iii). Nor has the defaulting Respondent stated that he is "commonly known" by the domain names (Policy, Paragraph 4(c)(ii)), an allegation that would anyway have been fruitless since there is no connection whatever between the domain names and the name of the registrant-Respondent Mr. Javier Renter�a.
Under these circumstances, the Panel cannot but conclude that Complainant is right that Respondent lacks rights or legitimate interests in the domain names (Policy, Paragraph 4(a)(ii).
Registration in Bad Faith
It has been sufficiently evidenced that Respondent offered the domain names for sale to one of Complainant�s owning companies for an amount by far exceeding out-of-pocket costs connected with the registration of the domain names. Having in mind that Respondent lacks any rights or legitimate interests in the domain names, this offer is self-explanatory that the primary purpose of Respondent at the time of registration was to obtain an illegitimate, huge profit at Complainant�s cost, which is the circumstance of bad faith registration described in Policy, Paragraph 4(b)(i) stating:
"circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name".
As pointed out in the complaint, Mr. Renter�a was the respondent in WIPO Case D2000-0050 The British Broadcasting Corporation v. Jaime Renteria, March 23, 2000 (the disputed domain names were , , and). In that case the learned panelist found that "bad faith registration and use is established by the fact that the Respondent offered to sell the domain name as part of a package of domain names for US$ 75,000", and a decision of transfer to the complainant was rendered. Respondent's conduct is nearly the same in the present case.
The Panel cannot overlook the fact that Mr. Renter�a is the registrant-respondent in following WIPO Cases:
- D2000-1808 (, , , and ),
- D2000-1810 ( and ,
- D2000-1811 (),
- D2000-1812 (, , , and ), and
- D2000-1814 (, , , , , and ).
The five cases are currently under examination by this acting panelist. Although the cases are separate, in all of them a finding of identity/confusing similarity, lack of Respondent's rights or legitimate interests in the domain names, bad faith registration and bad faith use has been made by the Panel. The Panel honors the complaints by granting the remedy of transfer of the domain names registrations to the complainant. The aggregate number of domain names disputed in the five cases, registered by Mr. Renter�a and reflecting marks owned by third parties (EMPRESAS POLAR or connected therewith) amounts to twenty. This shows that Mr. Renter�a has specially aimed at the EMPRESAS POLAR group in attempting to illegitimately extract profit at selling the domain names. Together with the domain names which were challenged in the BBC case, Mr. Renter�as�s registration of third parties� trademarks as domain names reaches at least 24. It also means that in the present case Mr. Renter�a has clearly engaged in a "pattern of such conduct" and incurred in the circumstance of bad faith registration described in Policy, Paragraph 4(b)(ii), which reads:
"you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct".
Therefore the Panel finds that Complainant has made out its case, that Respondent registered the domain names in bad faith (Policy, Paragraphs 4(b)(i) ,4(b)(ii) and 4(a)(iii)).
Use in Bad Faith
The Panel is satisfied by Complainant�s allegation, uncontested by Respondent, that this offer for sale is also an use in bad faith of the domain names by Respondent
Mr. Renter�a. See WIPO Cases D99-0001 World Wrestling Federation v. Michael Bosman, January 14, 2000, and D00-0001 Robert Ellenbogen v. Mike Pearson, February 2000, D2000-0050 and many other WIPO decisions where an offer for sale was found to be a bad faith use of the domain name. Mr. Renter�a�s domain name registrations and offer for sale is gross cybersquatting and abuse of the sort disallowed by the Policy. Complainant has proved that the registrations were made and are being used in bad faith (Policy, Paragraph 4(a)(iii)).
7. Decision
The Panel has found that the five domain names at issue are identical or confusingly similar to Complainant�s trademarks, that Respondent lacks rights or legitimate interests in said domain names, and that such domain names were registered and are being used in bad faith. Therefore, pursuant to Policy, Paragraph 4(i) and Rules, Paragraphs 14 and 15, the Panel requires that the registrations of the , , , and domain names be transferred to the Complainant BODEGAS POMAR, C.A.
Roberto A. Bianchi
Sole Panelist
Dated: March 2, 2001
Footnote:
1. According with the Venezuelan trademark classification, class 43 is used for trade names registrations.
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