WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fomento de Construcciones y Contratas, S.A. (FCC) v. Pedro Antonio Toledo Martinez
Case No. D2007-1751
1. The Parties
The Complainant is Fomento de Construcciones y Contratas, S.A. (FCC), Madrid, Spain, represented by the Law Firm Garrigues, Spain.
The Respondent is Pedro Antonio Toledo Martinez, Cieza, Murcia, Spain.
2. The Domain Names and Registrar
The disputed domain names are and . These domain names are registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 27, 2007. On November 29, 2007, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain names at issue. On November 29, 2007, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the disputed domain names and providing the contact details of the same. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 7, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 27, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 28, 2007.
The Center appointed Jos� Carlos Erdozain as the sole panelist in this matter on January 18, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The disputed domain names were registered on November 20, 2006.
The Respondent is a Spanish citizen, who is domiciled in Spain.
The Respondent does not use the domain name . When the domain name is typed, a site appears indicating that it has no content at all.
The merger of two well-known companies created the Complainant in 1992. The names of these two companies are Construcciones y Contratas, S.A. y Fomento de Obras y Construcciones, S.A.
The Complainant has more than 60,000 employees and is considered as one of Spain’s leading and largest construction companies.
The Complainant has filed evidence enough regarding its increasing and vast activity in the construction field in Spain and abroad. Likewise, the Complaint operates in other relevant sectors of the Spanish market such as the urban sanitation market or the cement industry.
The Complainant is the owner of a number of registered trademarks, which include the sign “FCC”. The entire list of these trademarks is contained in Annex 8 of the Complaint. Some of these trademarks can be listed as follows: Spanish trademark N� 1,700,313 FCC, which was filed on May 8, 1992; Community trademark N� 597,302 FCC, which was filed on July 23, 1997.
It has been evidenced that the Complainant is referred to in the Spanish market as “Grupo FCC”, in the light of the huge number of companies owned by the Complainant, and the activity developed all over the Spanish territory.
In addition, that the activity and the trademarks of the Complainant may be considered well-known (particularly in Spain) is supported by of the findings made in the two decisions which the Complainant has submitted in Annexes 12 and 13.
The Respondent has not submitted any evidence regarding his rights, if any, on the word “FCC”.
When typing the domain name , a site is loaded and a screen appears with the words “Grupo Freelance Consultor�a y Creatividad”.
The Respondent is not a licensee of Complainant.
The Complainant has filed as Annex 19 a copy of an email which was sent by Mr. Pedro Toledo, who is apparently the Respondent’s father, to Mr. Julio Angel Bravo S�nchez, who is a Complainant’s representative, stating that his son is ready to transfer the domain name due to the interest of the latter in said domain name.
5. Parties’ Contentions
A. Complainant
The Complainant contends that:
It was created by the merger, in March 1992, of two prestigious companies, that is, Construcciones y Contratas, S.A. and Fomento de Obras y Construcciones,
S.A.
It is reputable group of companies in Spain and abroad. It operates in several areas and is active in many European, African and American countries.
It is the owner of the well-known registered trademark “FCC” and a number of trademarks which contains the word “FCC” being all of them signs of recognized reputation. The Complainant lists the trademarks of its own.
“FCC” stand for Fomento de Construcciones y Contratas, the Complainant’s company name, commonly named and identified in the course of trade as “FCC”.
It is known and referred to in the market as “Grupo FCC”, since it is composed of many subsidiaries of which Grupo FCC is the parent company, or subsidiaries on which the Complainant has a considerable amount of shares.
The domain names at dispute are identical or confusingly similar to wide number of trademarks in which the Complainant has rights. This requirement is met because both domain names wholly integrate the Complainant’s well-known and reputed trademark “FCC”.
The Respondent has no rights or legitimate interests in respect of the domain names. This requirement is met, in the Complainant’s opinion, because the Respondent has no trademarks or other intellectual property rights in the terms “Grupo FCC” or “FCC”, and the domain names do not have any connection with the Respondent. Finally, the Respondent is not a licensee of the Complainant, nor has the Respondent obtained an authorization to use Complainant’s trademarks under any circumstance.
The domain names were registered and are being used in bad faith. This requirement is met, because “FCC” and/or “Grupo FCC” are well-known trademarks and company in the Spanish market. The registration of domain names that include terms of well-known trademarks is a bad faith in accordance with a number of WIPO Center decisions. In addition, there is no direct relationship between Mr. Pedro Antonio Toledo Mart�nez and Grupo FCC. Also to be taken into account is the fact that the domain name is in blank, so passive use of a domain name is bad faith use in accordance with numerous decisions of the Center.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Due to the fact that both parties are Spanish citizens, the Panel considers Spanish legislation to the merits of the case, specifically Spanish legislation regarding the protection of trademarks. This case will be decided in accordance with the Policy, the Rules and the Supplemental Rules.
A. Identical or Confusingly Similar
The first requirement which is established in the Policy consists of the fact that both, the domain names at dispute and the trademarks opposed by the Complainant, are identical or confusingly similar.
Given the circumstances of the case, it is evident that the domain names are not identical to the trademarks opposed by the Complainant. However, if the relevant or most distinctive part of the Complainant’s trademark is taken into consideration (i.e. “FCC”), the Panel concludes that the disputed domain names are confusingly similar to said part. Furthermore, in the light of the evidence submitted by the Complainant, there can be little doubt that Complainant’s trademarks are well-known. The Panel is also of the view that a Spanish consumer who expects to find information regarding the Complainant’s activities in the Internet would likely type the words “FCC” in the browser.
Finally, the word “Grupo” does not alter the prospect for confusing similarity when comparing both the Complainant’s trademarks and the domain names. The word “Grupo” does not have a specific or distinctive meaning in the Spanish language. The Complainant’s FCC trademark is readily discernible in both disputed domain names. “FCC”, which obviously is the most distinctive sign of Complainant’s activity in the Spanish market, is in the Panel’s opinion, a well-known trademark according to Spanish legislation on protection of trademarks. In light of the above, this Panel finds the domain names are confusingly similar to the trademarks which the Complainant has registered.
Therefore, the Panel finds that this first requirement is met in accordance with the Policy.
B. Rights or Legitimate Interests
Secondly, the Complainant must prove that the Respondent lacks any right or legitimate interests on the domain names. The Panel is satisfied that the Complainant has made a prima facie case to this effect, which the Complainant has not rebutted.
In this respect, the Panel has born in mind the Respondent’s lack of response to the evidence and contentions of the Complainant. This silence is quite eloquent, and in the Panel’s opinion may be deemed as a tacit acceptance of the Complainant’s allegations of fact.
On the other hand, the Respondent has not shown any preferential trademark (or other) right to the words “Grupo FCC” or “FCC”, as the case may be. On the contrary, the evidence submitted by the Complainant is overwhelming in the sense of demonstrating that the Complainant’s trademarks are well-known and that it has been continuously engaged in a fair and legitimate activity in several industrial and service sectors.
The Respondent is not licensee of the Complainant. The Respondent has apparently not been known under the words “Grupo FCC” or “FCC”. Finally, the Respondent appears not to have (on the present record) registered said words as a trademark. Therefore, the Panel concludes, in accordance with the Policy, that the Respondent lacks any right or legitimate interest in the domain names.
In conclusion, the Panel finds that this second requirement is met.
C. Registered and Used in Bad Faith
Finally, the Panel must examine whether or not the disputed domain names were registered and are being used in bad faith. The concept of bad faith is established on a non numerus apertus list in the Policy.
In this case, as the Panel has accepted that the Complainant’s trademarks are well-known. The panel in the circumstances also finds that the registration of the domain names was undoubtedly in bad faith. It is not conceivable to this Panel that the Respondent (it must not be forgotten that it is a Spanish citizen) was not aware of the breadth of the Complainant’s activity in the Spanish market and that “FCC” is identifiable with a company or a group of companies. The Respondent could register a domain name using a vast number of variations and words. But faced with that open door what did he do? He registered precisely those letters that were identical to a very well-known company or holding (i.e. “FCC”), just adding the word “Grupo”, which is generic word and does not give any differentiation to the domain names.
It must also be stressed that one of the domain names at dispute (i.e. “G”) is not active, but does not have any content at all. A large number of Center’s decisions have established that this fact may in appropriate circumstances constitute evidence of use of bad faith with respect to domain names. The Panel agrees with the merits of those decisions, and if we take into consideration the other elements of analysis (i.e. first and second requirements above), as they have been described above, the fame of the Complainant’s trademark, absence of response and the lack of any conceivable good faith use by the Respondent of the disputed domain name, the conclusion is that both domain names are being used in bad faith.
Therefore, the Panel finds that the third requirement of the Policy is also met.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names and be transferred to the Complainant.
Jos� Carlos Erdozain
Sole Panelist
Dated: February 4, 2008
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