WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Laboratorios Recalcine S.A. v. Victor Abarca
Case No. D2001-0631
1. The Parties
1.1 Complainant: LABORATORIOS RECALCINE, S.A., of Chilean nationality, with a place of business at Av. Vicuña Mackenna No. 1094, Santiago, Chile.
The authorized representative for the administrative proceeding is Ms. Carolina Sep�lveda, with address at Miraflores No. 130, Santiago, Chile.
1.2. Respondent: Mr. VICTOR ABARCA, with address at L159 Eugene ST. Rochester, NY, US. 14606.
2. The Domain Name and Registrar
2.1. The subject of the complaint is the domain name .
2.2 The registering entity for the domain name is NAMESECURE, located at P.O. Box 27096, Concord, CA 94527, USA
3. Procedural History
3.1. A complaint was submitted to the WIPO Arbitration and Mediation Center (hereinafter "the Center") on May 4, 2001 in accordance with the "Uniform Domain Name Dispute Resolution Policy" (hereinafter "the Uniform Policy") as adopted by ICANN on October 24, 1999, and in accordance with the Rules for the Uniform Policy that ICANN likewise adopted.
3.2 The Complaint was notified to Respondent on May 25, 2001.
3.3 On June 14, 2001, the Center sent to Respondent a Notification of Respondent Default.
3.4 On June 25, 2001, WIPO appointed Luis H. de Larramendi as panelist and provided him with a complete copy of the dispute related documentation on the same date.
4. Factual Background
4.1. Complainant, LABORATORIOS RECALCINE, S.A., is the owner of numerous registrations in Chile, the Dominican Republic, Panama, Nicaragua, Singapore, Colombia, Uruguay, Brazil, Guatemala, Honduras, Costa Rica, Argentina and El Salvador of its trademarks RECALCINE, LABORATORIOS RECALCINE and LBLABORATORIOS RECALCINE.
The existence of the registrations owned by complainant was duly evidenced in the complaint.
It is further to be noted that the trademark LABORATORIOS RECALCINE corresponds to the very corporate name of complainant, Laboratorios Recalcine, S.A. The company was incorporated in 1922 and is particularly well known in Latin America, as was acknowledged in case No. D2000-1681 relating to the domain name . In that case the Administrative Panel held that the domain name in question should be transferred to complainant, Laboratorios Recalcine, S.A.
4.2. Respondent obtained the domain name on March 26, 2000.
4.3 Notwithstanding the foregoing, it is not possible to access any web site.
5. Parties� Contentions
5.1. Complainant
The complainant contends:
- that Laboratorios Recalcine, S.A. has become the most significant privately-owned laboratory in Chile. The distribution of its products extends throughout all of Latin America and reaches countries as far away as Singapore;
- that Laboratorios Recalcine not only constitutes a registered trademark on behalf of complainant, but in addition is its corporate name, which is to say the corporate identification of the same and therefore its greatest intangible asset;
- that the domain name in dispute is identical or similar to the trademark LABORATORIOS RECALCINE owned by the complainant;
- that the respondent has no rights or legitimate interests in the domain name , as respondent is in no way known by that name and, moreover, respondent is well aware of the reputation of Laboratorios Recalcine, S.A.;
- that the respondent has registered the domain name in bad faith and is using it in bad faith, inasmuch as LABORATORIOS RECALCINE is a well-known trademark with which respondent must have been familiar and which, furthermore, warrants as such, the special protection afforded under the TRIPS agreement, the Paris Convention and other international regulations to trademarks with a reputation;
- the act of registering a well-known trademark or name undoubtedly constitutes unlawful conduct because it is contrary to good customs and correct moral standards.
In view of all the foregoing, complainant requests that the domain name be transferred to it.
5.2. Respondent
The respondent has not submitted any response, although it may be seen from the file that the complaint was sent to all contact addresses provided by the respondent to the Registrar.
6. Discussion and Findings
6.1. Applicable Rules
Paragraph 15a) of the Rules instructs the Panel to render its decision on the basis of:
- the statements and documents submitted by the parties;
- the provisions of the "Uniform Policy" and of the "Rules" themselves; and
- any rules and principles of law that it deems applicable.
6.2. Examination of the Premises set out in Paragraph 4a) of the Uniform Policy
Paragraph 4a) states the following premises:
- the domain name registered by the respondent must be identical or confusingly similar to a trademark or service mark in which the complainant has rights;
- the respondent must have no rights or legitimate interest in respect of the domain name; and
- the domain name must have been registered and used in bad faith.
6.2.1. Domain Name identical or confusingly similar to Complainant�s Trademark
Leaving aside the first-level generic component ".com", the domain name is confusingly similar to the complainant�s trademark RECALCINE, identical to the complainant�s trademark LABORATORIOS RECALCINE and likewise identical to the complainant�s corporate name, Laboratorios Recalcine, S.A.
6.2.2. Right or Legitimate Interest in the Disputed Domain Name
As the respondent has not submitted any response, the analysis of the existence or non-existence of a right or legitimate interest in the disputed domain name can only be conducted in the light of the facts provided by complainant and of the criteria laid down in paragraph 4c) of the Uniform Policy.
According to those criteria, the owner of the domain name in dispute would have to be able to show that one or more of the following circumstances was given:
(i) before any notice to you [respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Starting out from these premises, the panel reaches the following conclusions:
- The domain name in dispute does not correspond to any active web site. Furthermore, there is nothing to show that respondent may have become known by or may have operated under that name.
- The trademark LABORATORIOS RECALCINE enjoys a reputation, above all in Latin America, and corresponds, furthermore, to the very corporate name of complainant, an important pharmaceutical company. In this light, it cannot reasonably be imagined that respondent could have had any rights or legitimate interests in the domain name in dispute.
The panel therefore considers that it is adequately proved that the respondent has no rights or legitimate interests in the domain name in dispute.
6.2.3. Registration and Use in Bad Faith of the Domain Name
The conclusion of the Panel is that this third requirement is similarly met. This is said in the light of the following three factors:
- the conduct of the respondent should be regarded as coming directly under the provision of paragraph 4.b ii) of the Uniform Policy;
- the Panel is satisfied that the name LABORATORIOS RECALCINE may be considered well known;
- respondent has been passive in its holding of the domain name in dispute.
6.2.3.1 Paragraph 4 b ii) of the Uniform Policy
According to this paragraph there is bad faith in the registration and use of a domain name if it is adopted by the respondent in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct .
In the instant case the adoption of the domain name by the respondent without doubt prevents the owner of the trademark LABORATORIOS RECALCINE from adopting that mark itself as a domain name at the .com level and, indeed, from using its own corporate name, Laboratorios Recalcine, S.A., in that form.
Given the well-known nature of the trademark LABORATORIOS RECALCINE, the respondent must have been fully aware, when registering the domain name , that he was misappropriating a third party�s distinctive sign and that the adoption of that domain name could lead consumers mistakenly to believe that it was actually a domain corresponding to the complainant, Laboratorios Recalcine, S.A.
As was held in the decisions on WIPO cases No. D2000-0018 or D2001-0497, the registration by a third party of a domain name equivalent to a mark with a reputation is an act of bad faith when it is admitted that there was prior knowledge of that mark or when, as in the instant case, it cannot reasonably be denied that there was such knowledge, irrespective of whether the owner of the domain name may or may not have engaged in similar conduct in the past.
6.2.3.2. LABORATORIOS RECALCINE is a well-known trademark
There can be no doubt that the trademark LABORATORIOS RECALCINE is well known in Latin America. As the respondent has not replied to the complaint, it can not be established whether he might actually have confessed his awareness of the reputation of the mark at the time of adopting the domain name in dispute. However, under the circumstances it would appear that he could only have been moved by the prospect of obtaining some form of profit or of preventing the use of the name by the rightful owner and that there can be no other plausible explanation for his decision to adopt that domain name.
6.2.3.3. Passive holding.
In that there has been no use of the domain name in dispute, it must logically be concluded that the respondent has been holding it passively.
According to numerous decisions given by the Center, passive holding is in turn an indication of bad faith both in the registration and in the use of the domain name in question (see decisions D2000-0464, D2000-0003, D2000-0239, D2000-1402 and D2001-0497, among others), above all in cases such as this where the respondent must be aware, given the reputation enjoyed by the corresponding trademark, that such passive holding prevents the rightful owner of the distinctive sign from using it as a domain name.
The Panel therefore concludes that the third of the requirements laid down in paragraph 4 a) of the Uniform Policy is likewise met in the instant case.
7. Decision
The Panel considers that the complainant has proved the three circumstances described in paragraph 4a)(i), (ii) and (iii) of the Uniform Policy and therefore decides that the domain name should be transferred to the complainant.
Luis H. de Larramendi
Sole Panelist
Date:July 6, 2001
Full & Egal Universal Law Academy