WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Eroski, S. Coop. v. Getdomains Ishowflat Limited
Case No. D2003-0209
1. The Parties
The Complainant is Eroski, S. Coop., Vizcaya - Spain (the "Complainant") represented by Mr. Iñaki Bolinaga.
The Respondent is Getdomains Ishowflat Limited, of Sheung Wan, Taiwan, Province of China (the "Respondent").
2. The Domain Name and Registrar
The domain name at issue is , (the "domain name") registered with Tucows Inc., a corporation with head office at 96 Mowat Avenue, Toronto, Ontario M6K 3M1, Canada (the "Registrar").
3. Procedural History
On March 17, 2003, a Complaint without indicating a date was submitted by e-mail to the WIPO Arbitration and Mediation Center (the "Center"). The submission was made 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").
On March 19, 2003, The Center acknowledged receipt of the Complaint, and issued a notice of allowance to prosecution, provided the satisfaction of formal requirements contained in the Policy and Rules, and assigned corresponding case Number: D2003-0209 and Case Manager.
On March 19, 2003, The Center notified the registrar on record, , that the Complaint was filed by Complainant, against Antonio Acuña, and that it would concern the domain name. A request was made to , in conformance with the Rules and Policy, to indicate receipt of the Complaint, and to confirm that Antonio Acuña registered the domain name with , among others. On March 25, 2003, and after three reminders, responded by informing that the domain name registration was transferred to Tucows (The "Registrar").
On March 25, 2003, The Center notified to the Registrar about the filing of the Complaint against Mr. Antonio Acuña, in the same terms as it did to . A request for information was made as well as for the locking up of the domain name.
On March 25, 2003, Registrar responded to the Center by confirming, among others, that the domain name was indeed registered with Registrar and that the current registrant thereof was Getdomains Ishowflat Limited as a result of a transfer. From the communication it was obtained that the transfer was made on the same date. The pertinent information to identify the registrant, now Respondent was submitted and the domain name was locked as per order of the Center.
On March 26, 2003, The Center informed Complainant about the current names of the registrant, now Respondent, and of Registrar. The Center made a Complaint Deficiency Notification to Complainant, requesting the modification of the Complaint by March 31, 2003.
On March 31, 2003, Complainant filed the Complaint with the modification that the Center had requested.
On April 26, 2003, the Center sent in Spanish, a Notification of Complaint and Commencement of Administrative Proceeding, in case No. D2003-0209, to the Respondent. The Center established May 15 as the deadline for the submission of response to the WIPO Center and the Complainant.
On May 5, 2003, Respondent sent an e-mail to the Center asking for a copy of the Complaint in the English language and on the same date, the Center informed to the Complainant that, as per request of Respondent, and in accordance with the Policy and Rules, the Complaint had to be translated from Spanish into English, for submission on May 23, 2003. Complainant made a timely filing of the translated Complaint.
On June 11, 2003, the Center sent a new Notification of Complaint and Commencement of Proceeding to the Respondent, this time in English. The Center marked July 1, 2003, as the deadline for the submission of a response to the WIPO Center and the Complainant.
The Notification of the Complaint included following paragraph:
"6. Default. If your Response is not sent by the above date or we have not received any required payment from you by that 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."
On July 1, 2003, the Center sent a Notification of Respondent Default to the Parties by e-mail.
After having received Luis C. Schmidt�s Statement of Acceptance and Declaration of Impartiality and Independence, the Center appointed him as a Sole Panelist. The decision date was scheduled for July 28, 2003. Thus, the Administrative Panel finds that it has been properly constituted.
The Panel sharing the assessment of the Center 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. The Panel finds that the Center has duly notified Complaint to the Respondent, pursuant to Rules, paragraph 2(a), and that the Notification of Respondent Default was also properly notified.
There were no extensions granted or orders issued.
The registration agreement for the domain name at issue has been written and executed in English by Respondent-Registrant Getdomains Ishowflat Limited and the Registrar. The Complainant has submitted its Complaint without any observation. By undertaking that there are no special circumstances to determine otherwise, as provided in Rule paragraph 11, the language of this proceeding is English.
4. Factual Background
After Complainant�s assertions, supported by the documents enclosed as annex, all of them undisputed by Respondent � as having defaulted to the Complaint � and after proper verification conducted at the database of the Spanish Trademark Office by the Panel itself, based on the discretional powers conferred upon this latter, in accordance with the article 10a) of the Regulation, applicable to the present matter, supported by precedents such as D2000-0076, the Panel finds that the Complainant owns the following trademarks registered in Spain:
Number
Date of Grant
Name
Class
2.141.971
VISTO BUENO
22.
2.141.976
VISTO BUENO
23.
2.141.977
VISTO BUENO
24.
2.141.978
VISTO BUENO
25.
2.141.979
VISTO BUENO
26.
2.141.980
VISTO BUENO
27.
2.164.895
VISTO BUENO (word and device)
22.
2.164.896
VISTO BUENO (word and device)
23.
2.164.897
VISTO BUENO (word and device)
24.
2.164.898
VISTO BUENO (word and device)
25
2.164.899
VISTO BUENO (word and device)
26
2.164.900
VISTO BUENO (word and device)
27
2.416.465
VISTO BUENO (word and device)
1
2.416.466
VISTO BUENO (word and device)
2
2.416.467
VISTO BUENO (word and device)
3
2.416.468
VISTO BUENO (word and device)
4
2.416.469
VISTO BUENO (word and device)
5
2.416.470
VISTO BUENO (word and device)
6
2.416.471
VISTO BUENO (word and device)
7
2.416.472
VISTO BUENO (word and device)
8
2.416.473
VISTO BUENO (word and device)
9
2.416.474
VISTO BUENO (word and device)
10
2.416.475
VISTO BUENO (word and device)
11
2.416.476
VISTO BUENO (word and device)
12
2.416.477
VISTO BUENO (word and device)
13
2.416.478
VISTO BUENO (word and device)
14
2.416.479
VISTO BUENO (word and device)
15
2.416.480
VISTO BUENO (word and device)
16
2.416.481
VISTO BUENO (word and device)
17
2.416.482
VISTO BUENO (word and device)
18
2.416.483
VISTO BUENO (word and device)
19
2.416.484
VISTO BUENO (word and device)
20
2.416.485
VISTO BUENO (word and device)
21
2.416.486
VISTO BUENO (word and device)
28
2.416.487
VISTO BUENO (word and device)
29
2.416.488
VISTO BUENO (word and device)
30
2.416.489
VISTO BUENO (word and device)
31
2.416.490
VISTO BUENO (word and device)
32
2.416.491
VISTO BUENO (word and device)
33
2.416.492
VISTO BUENO (word and device)
34
2.416.493
VISTO BUENO (word and device)
35
2.416.494
VISTO BUENO (word and device)
36
2.416.495
VISTO BUENO (word and device)
37
2.416.496
VISTO BUENO (word and device)
38
2.416.497
VISTO BUENO (word and device)
39
2.416.498
VISTO BUENO (word and device)
40
2.416.499
VISTO BUENO (word and device)
41
2.416.500
VISTO BUENO (word and device)
42
Complainant, Eroski, S. Coop., is a company doing business in the field of product distribution and commercialization in Spain, having hypermarket and super-market facilities all over that country. It was set-up in the spring of 1969, from the integration of ten corporative entities of Vizcaya and Guipuzcoa. The Corporation grew and in 1970, the name was changed to Eroski, S. Coop. as it is presently called.
From consulting websites, as it would be "" and "," Grupo Eroski (Eroski Group) can be perceived, as an entity controlling a number of businesses and trademarks. Vistobueno is among the listed trademarks, as applied in connection with textile and clothing products that are sold throughout the chain of stores that the company owns.
Mr. Antonio Acuña, registered the domain name presumably on December 2, 2001, in conformance with the documentation submitted by the Complainant and searches conducted by the Panel at its discretion, at the WHOIS database of Network Solutions, Inc.
On November 2002, before the Complaint was filed, someone anonymous contacted the Complainant seeking the negotiation of the domain name. No particular amount of money was requested. However, the domain name was offered to Complainant at a "very competitive price." On a later communication, Mr. Antonio Acuña asked Complainant to transfer the four domains that it possessed for vistobueno or the purchase of . The reason given was that in the view of Mr. Acuña, it was better of that the five domains be in the name of one single party. Complainant did not follow any dialog or exchange of correspondence, whether by mail or other wise.
In accordance with the documentation filed by the Complainant, which Respondent did not contend as having defaulted, as well as the search that the Center made, it was found that the domain name was transmitted to the Respondent at the address given above. The date of transfer appears to be March 25, 2003. That can be obtained from information that the Registrar sent to the Center, via mail, on that same date. Previous to that, on March 19, 2003, the Center had notified the Complaint to the former Registrar, who despite of three reminders, did not respond until March 25, 2003, informing that the domain name had been transferred to another Registrar and that it was no longer responsible for its care. N did not explain to the Center the reason why it acknowledged receipt on the date of the transfer, when the notice from the Center was received before that.
On March 18, 2003, that is, one day after the Complaint was filed, Mr. Acuña sent a new notice to Complainant suggesting a deal.
From the information obtained by consulting records and from further searches, it could be perceived that the original owner of the domain name has been involved in at least one other UDRP proceeding, having lost and to Caja de Ahorros del Mediterraneo, a Spanish financial corporation.
Moreover, from inquiries made by using searching tools such as Y, it could be obtained that Getdomains is not listed as a company in Taiwan, and that the address and telephone numbers that were provided to Registrar are wrong. In particular, it appears to be no address listed as Shun Tak Centre in Taiwan, as it rather takes the searcher to Hong Kong. From the foregoing it can be presumed that Respondent does not exist, and the original holder of the domain name, Mr. Antonio Acuña, to hide and thus avoid being sued, very well could have employed it.
There is actually no site that can be accessed under domain name or there is no indication that it could have been routed.
After the Complainant�s assertions � not disputed by Respondent because of the default � and the confirmation sent by the Registrar to the WIPO Center, it has been demonstrated that the Respondent has registered the domain name with Tucows, Inc.
5. Parties� Contentions
5.1 Complainant
The Complainant asserts that:
� The domain name at issue is identical to the trademark on which the Complainant has rights; and the Respondent has no rights or legitimate interests in respect of the domain name; and that it was registered and is being used in bad faith.
� The Complainant�s trademark VISTOBUENO, identifies a famous and/or renowned brand of clothing/fashion all over Spain. In accordance with the statements of Complainant, VISTOBUENO products are widely advertised nationally. VISTOBUENO is apparently a very famous trademark in Spain, although Complainant and did not provide persuasive evidence on this regard. The Complainant has vigorously registered its intellectual property rights in all trademark classes, with complete success. Indeed, there is no other individual or corporation than the Complainant holding trademark rights on VISTOBUENO in Spain, at least in connection with textile products, and certainly the Respondent holds no rights whatsoever on the mark.
� There is no doubt about the lack of any legitimate intellectual property right of the Respondent to those marks, and proof of the Respondent�s bad faith in registering and using the domain name (paragraph 3(c) of the Policy). Complainant argued that from consulting the Spanish Trademark Office or the Business Registration Office, it could not be obtained that nobody, excepting the Complainant itself, holds rights over the domain name. In addition, it purported that from the unsolicited offer to sell received from the former holder of the domain name, Respondent acted in bad faith.
� The original registrant resides in Spain and is most probably a Spanish citizen. Therefore, he is a resident within the geographical area where VISTOBUENO products are sold and publicized in the media. Said products can be obtained indeed, in the province and place of residence (in Seville, there are located at least four stores selling the products).
� The former owner transferred the domain name after the Complaint was filed. This could not be inferred as a coincidence and can be contended as a fraud.
� That the Complaint had to be modified as it was originally entertained against Mr. Acuña. The foregoing was made due to the fraudulent transfer of the domain name to Respondent made shortly after the filing of the Complaint. Likewise, it was in bad faith that Mr. Acuña sent a new offer one day after the Complaint was filed, knowing to this fact, and then changed the information about the holder.
� The Complainant requests the Administrative Panel to issue a decision that the contested domain name must be transferred to the Complainant.
� The Complainant agrees, with respect to any action that Respondent may bring against decisions of the Administrative Panel that it would stick to the jurisdiction of the courts in Spain.
5.2 Respondent
The Respondent has not submitted a response, and therefore is in default. After the Notification of Respondent Default, it has not made any submissions whatsoever.
6. Discussion and Findings
6.1 Effects of Respondent Default
Respondent was required to give an answer to the Complaint as filed by the Complainant. According with Rules, paragraph 5(b)(i) "(t) he response shall (...) (r) espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain-name holder) to retain registration and use of the disputed domain name (...)."
Under the Rules, and in particular 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."
In line with the foregoing, any defaulting response would indicate that the assertions that the Complainant raised would give sufficient grounds to a default decision in the favor of this latter. However, under the Policy the defaulting response still needs to be qualified, because "the complainant must prove that each of these three elements are present." Policy, paragraph 4(a) in fine.
6.2 Independent Connection with the Website of Respondent
As concluded in Case D2000-0076, the Panel considers that under Paragraph 10(a) of the Rules, the Panel has the power to independently search over the Internet, in order to obtain as much information as required to render a decision.
The Panel visited the "www." website of the Respondent. The address did not lead to an active website.
6.3 Identity or Confusing Similarity
The Panel has carefully considered the allegation that the Complainant has made that the domain name is identical to the registered trademark VISTOBUENO. On the other hand, the Panel could not analyze any arguments from Respondent contesting to the foregoing, due to the fact that it defaulted to give an answer to the Complaint.
The Panel has anyway made its own comparison of the domain name at issue vis-a-vis the Complainant�s trademarks VISTOBUENO, and finds that that the second level domain name vistobueno, is identical letter-by-letter to the Complainant trademarks, and that the addition of ".com" �a generic top level domain intended for commercial organizations- makes it rather difficult not to hold it to be confusingly similar to said trademark.
6.4 Rights and Legitimate Interests in the Domain Name
The Panel has carefully considered the allegation of the Complainant as to the lack of rights or legitimate interests of the Respondent in respect of the domain name. In particular, the Panel has noted the argument that the Respondent lacks of any legitimate trademark or other intellectual property right in the domain name. The Panel would again state that Respondent did not bring any defensive statement or arguments against the Complaint.
In the present default proceeding there is no contention on record, made by the Respondent or that anyhow the Panel could rely on, to conclude that it might have trademark or other intellectual property rights or in general, legitimate interests in the domain name. Nothing can be evidenced reasonably leading to infer to the foregoing fact, pursuant to the Policy, paragraph 4(c). This is not to accept that Complainant did much to prove that Respondent did not have legitimate interests over the domain name. Complainant has argued "neither the Spanish Bureau of Patents and Trademarks nor the Business Registration Office shows (sic) any holder other that (sic) the Complainant holding rights on that name." However, that assertion was not supported on any evidence whatsoever. Likewise, Complainant did not realize that Respondent might not had a legitimate interest over the domain name as a trademark right only, but that an interest could have accrued somehow, in virtue of any business made from the use of the domain name in itself or other possibilities.
Notwithstanding the foregoing, from the inquiries that the Panel made, it was possible to obtain that Respondent or the previous owner of the domain name, did not do anything that could have triggered a legitimate interest on the same. As it has been discussed above, there is nothing on record giving the slightest clue that the domain name is in use or that there have been preparations for being used, in connection with a business or any activity in general. This panel gives particular weight to the fact that Respondent defaulted. It can be inferred that by defaulting Respondent showed nothing else but an absolute lack of interest on the domain name. And in the absence of a response, it is truly hard to conclude about the legitimate interest of the Respondent, on at least some sort of plan or intention to start using the domain name. The Panel disagrees with the simplistic statement of Complainant but understands the difficulty that it has faced to show what is actually in the mind of Respondent. Proving negative facts is not particularly an easy task. For that reason, Rule 4(a)(ii) binds the Complainant making a prima facie case. The foregoing represents that the burden of proving rests initially on this party. However, the burden cannot go as far as to overwhelm. It is incumbent on Respondent to contribute to the fact-finding and if contrary to that, it rather incurs in default, there is nothing that the Panel could do to discuss in its benefit.
Therefore, the Panel finds that the Respondent has no rights to or legitimate interests on the domain name at issue.
6.5 Registration and Use in Bad Faith
6.5.1 Preliminary Remarks
The initial holder of the domain name, Mr. Antonio Acuña, resides in Spain and is most probably a Spanish citizen. Spain is also within the geographical area where trademark VISTOBUENO has been registered and where it has been used. This was asserted by Complainant and ran undisputed by Respondent. It is most likely that Mr. Acuña was aware of the products and trademark of the Complainant.
In registering the domain name, the former holder intended reselling it to Complainant. As a matter of fact, it can be regarded a clear cut and thus indisputable fact that Mr. Antonio Acuña himself or someone related to him or acting under instructions or request, sent an e-mail to Complainant, with a transfer offer referring to the domain name "at a very competitive price." The refusal of Complainant to enter into a negotiation, lead Mr. Acuña to respond, suggesting certain variations to the original offer, in order to either sell the domain name to Complainant or get the four other vistobueno domain names pertaining to this latter. From its statement, it can be obtained that Mr. Acuña recognized to the value of the vistobueno domain name family that he knew, and to the convenience having them under one single ownership and source. The Panel would consider that Mr. Acuña could have very well made the second offer for inducing Complainant to believe that it was acting in good faith when it was not, or for preparing a defense in a UDRP. What is definitively most surprising are the sudden reactions of Mr. Acuña to the submission of the Complaint. He first contacted the Complainant again, one day after the Complaint was filed and shortly thereafter, he proceed making the transfer of the domain name to an entity whose data were false, in accordance with information submitted to the Registrar. N the former registrant, may have contributed to all this movements by having waited to acknowledge receipt to the Center�s notification and, during that time, accepted or tolerated that the original registrant made the transfer. It cannot be told from records whether contributed to that actively or passively, but what it did was very suspicious.
Mr. Antonio Acuña knew that Complainant was the holder of the four-vistobueno domain names. He contacted Complainant who was the trademark rights holder of the same name. It would have been difficult to believe that Mr. Acuña could have come to the Complainant by coincidence or by chance. If he made the approach and later discussed about the four domains, he necessarily would have had investigated Complainant. There can be no doubt that Mr. Acuña acted in bad faith when registering the domain name.
Furthermore, Mr. Antonio Acuña has lost at least one domain name registration, , under very similar circumstances as the present one. In that occasion, Mr. Acuña sent a communication to the trademark owner under identical terms as those of the present matter. The Panel deciding over that controversy considered the offer of Mr. Acuña as a "speculative intention" (intención especulativa), and the registration made in bad faith as a result.
Notwithstanding the above, Mr. Antonio Acuña transferred to Respondent any interest that he could have held on the domain name. As a result of that he cannot be called or referenced as a Respondent to this proceeding. The facts that the Complainant narrates illustrate about the multiple wrongs that Mr. Acuña perpetrated by registering and using the domain name. The Panel shares the views of Complainant as to the allegations raised against the original registrant �although Complainant is wrong to call or refer Mr. Acuña as the Respondent- and is even annoyed by the possibility that could have co-participated in the assignment process or that at least was so permissive. If would have given prompt response to the Center�s notification, the Domain name would have been put on hold before the time that Mr. Acuña made the transfer.
The Panel is troubled that Mr. Antonio Acuña cannot attend the current proceeding as a defendant or in any other capacity and that instead, all what he did can only be referential to the present analysis and discussion. The Panel will not make a particular pronouncement on that regard, but will anyway state that the original registrant could have likely attempted against section 8(a) of the Policy, by having transferred the domain name when there was a pending administrative proceeding. Article 3(a) of the Rules could be interpreted as to support that the proceeding starts or "initiates" when the complaint has been filed. There is however, a specific provision of the Rules indicating that the proceeding shall initiate until the Center has notified the Respondent, and that appears to dictate the norm. The former holder was clever enough to escape from being called to the proceeding taking advantage of loopholes and thus, saving the domain name by putting it under the name of a "good faith" assignee. As a result of that, the course of the proceeding has been shifted, requiring that the analysis of factors of paragraph 4 of the policy, is made as applied to Respondent.
Paragraph 4(b) of the Policy refers to certain factors which, if found to be present, shall constitute evidence of registration and use of a domain name in bad faith. The category is not exhaustive, but include:
"(i) circumstances indicating that you (the Respondent) 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, or valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
"(ii) 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; or
"(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor;
"(iv) by using the domain name, you have intentionally attempted to attack, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant�s mark as to the source, sponsorship, affiliation or endorsement of your website or location or of a product or service on your website or location."
From paragraph 4(a)(iii) of the Policy, it can be noted that the bad name factor has to be present in both the registration and use of a domain name. From the provision quoted above, that is, Rule 4(b), it can be obtained that paragraphs or sections (i) to (iii) relate to the question of registration of a domain name in bad faith, while (iv) specifies the use after acquisition through registration has been made. The Panel will proceed the discussion of the registration and use factors, based upon the methodology set by Rule 4(b), but at the same time, bringing whatever additional analysis considered in precedents or other forms that are accepted in UDRP.
6.5.2 Registration in Bad Faith
In the present proceeding, the Respondent, Getdomains Ishowflat Limited, did not itself register the domain name and is rather a transferee. That is the reason why the doctrine of "extension" can be invoked here. That argument is supported on paragraph 4(b)(i) of the Rules and of various precedents, as it would be cases number D2000-0861, D2000-0079 and D2000-1406. For "extension" of a registration it is understood that the corresponding term "extends beyond the original act of registration and covers subsequent acquisitions of the domain name." Dixons Group Plc v. Mr. Abu Abdullaah, D2000-1406. The bad faith of Respondent consists on a number of factors, triggering from what the original registrant made to put the domain name save from possible attacks. Under a scenario as afore-mentioned, the former registrant could have certainly created or used Respondent to complete the circle. From the findings made and the information contained in the records of the case, this Panel believes that it is possible inferring the existence of a relation between Respondent and its predecessor in title Mr. Acuña.
A further element of bad faith would derive from the false information that Registrant furnished to the Registrar. As mentioned above, the search that the Panel made unveiled that irregularity, which is in breach of paragraph 2(a) of the Policy, relating to the veracity of the information provided in the registration agreement, and is also embraced by WIPO cases as D2001-0001 and D2001-1105. The cited cases determine that "the registration of a domain name under a false identity is an element proving that the domain name was registered or maintained in bad faith within the meaning of section 4(a)(iii) of the Policy." In addition to the foregoing, someone intervening in the proceeding to ask for the translation of the Complaint and then not showing up to respond, is definitively not acting in good faith.
The circumstances above described satisfy the Panel to conclude that, for the purposes of Paragraph 4(a)(iii) of the Policy, the Domain name was registered in bad faith.
6.5.3 Use in Bad Faith
Concerning the use in bad faith, the Panel finds that no access can be made to any website, when selecting . The foregoing drives to the conclusion that the domain name is not in use. However, the Panel notes that "being used in bad faith is not limited to positive action; inaction is within the concept" (WIPO Case No.D2000-0003). Instead, in view of the Panel, Registrant has made a passive holding of the domain name. In accordance with that theory, use of a domain name in bad faith can be found when there are circumstances leading to passive holding; among those circumstances amounting to the use in bad faith, the Panel notes "when it appears that there is no way in which such name could ever be used legitimately in relation to a business or offering of goods or services and the identity of Registrant remains unknown" (Kyobo Life Insurance Co., Ltd. v. Max, D2003-0008) or when the Respondent has provided false contact details to the Registrar. In addition, being consistent with precedents like D2000-0869, D2000-0615 and D2003-0008, the Panel would extend the scope of paragraphs 4(b)(i)-(iii), to the use in bad faith of the domain name when the use is made "with one of the purposes outlined in those paragraphs." The panel feels comfortable in concluding that the two angles that were described apply to the particular matter.
As to the question whether VISTOBUENO is a famous or well-known mark in Spain, the Panel cannot draw such conclusion from the information submitted with the Complaint. The trademark at issue is VISTOBUENO and not EROSKI. Perhaps, there would be no doubt that EROSKI can be regarded as a well-known trademark, but Complainant did not clearly show the same for VISTOBUENO. Accordingly, the Panel believes that VISTOBUENO cannot benefit from the rights contained in the international treaties that the Complainant has invoked and most particularly, from the WIPO "Joint Recommendation Concerning Rules on the Protection of Well Known Trademarks."
The foregoing means that, in this particular case, the bad faith issue would not be resolved on the basis of what the WIPO Recommendations have established, that is, that registration or use of the domain name was made in bad faith just by the fact that it reproduces or imitates a well known mark. However, this is not to say that bad faith cannot be found in a case in which the mark has not been regarded to be well-known. In the instant matter, from what it has been discussed above at length, it is possible to conclude that the domain name was registered and used in bad faith, in full compliance with paragraph 4(a)(iii) of the Policy.
7. Decision
The Panel has found that the domain name is identical or confusingly similar to the trademarks of the Complainant, and that the Respondent has 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 that it has been and is being used in bad faith.
Therefore, pursuant to Paragraphs 4(a)(i), (ii) and (iii) of the Policy and 15 of the Rules, the Administrative Panel decides to request that the domain name be transferred to the Complainant Eroski, S. Coop.
Luis C. Schmidt
Sole Panelist
Dated: July 28, 2003
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