Grupo Picking Pack, S.A. v. Próspero Morán and Asturnet, S.L.

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE PANEL DECISION

GRUPO PICKING PACK, S.A. f/k/a GRUPO HISPANO-SUIZA, S.A. v.

Prospero Moran and ASTURNET, S.L.

Case No. D2000-1220

1. The Parties

The complainant is GRUPO PICKING PACK, S.A., a company incorporated under Spanish

law and having its principal place of business at C./ Solsonés s/n, Edificio

Muntadas, Parque de Negocios Mas Blau, El Prat de Llobregat, Barcelona, Spain

(the "Complainant" or "GPP"). GPP is represented in this proceeding by Mr. Ignacio

López-Balcells, Esq., of BUFETE B. BUIGAS, Barcelona, Spain.

Formally. the respondents are two different persons or entities: Mr. Prospero

Moran, an individual person with an address at Fdez. Ladreda, 32, esc. A, 2

B, Oviedo 33011, Spain, and ASTURNET, S.L., Parque Tecnológico de Llanera, Asturias

33420, Spain (both collectively the "Respondents"). According with the information

provided on October 11, 2000, by the registrar to the WIPO Center, the registrant,

administrative contact and billing contact for both challenged domain names

is Mr. Prospero Moran with an E-mail address at p_moran@asturnet.es. However

the Complainant has also named Asturnet, S.L. as a Respondent. Asturnet, S.L.

was the registrant of "pickingpack.com" when the domain name registration

record was created (November 4, 1998). Asturnet, S.L. has been notified

of the Complaint. See 3 below. The Complaint refers to two respondents

who are closely related with each other. For all practical purposes the Panel

finds that the Respondents are not but one domain-name holder. There has not

been and there is no need for a consolidation request . The Complaint is properly

addressed pursuant to Rules, Paragraph (c), which reads:

"The complaint may relate to more than one domain name, provided that the domain

names are registered by the same domain-name holder".

2. Domain Name and Registrar

The domain names at issue are "pickingpack.com" and "pickingpack.org",

both registered with Network Solutions, Inc., of Herndon, Virginia, USA:

3. Procedural History

On September 14, 2000, the Center received by e-mail a Complaint 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 September 18, 2000, the Complaint was received

in hardcopy.

At the Center’s request, on October 11, 2000, the registrar NSI confirmed that

the domain names at issue are registered with it, that the registrant, administrative

contact and billing contact is Prospero Moran with E-mail address at p_moran@asturnet.es.,

that the NSI 4.0 Service Agreement is in effect and that the domain names are

in "active" status.

On October 11, 2000, the Center sent to the Respondents a Notification of Complaint

and Commencement of Administrative Proceeding by post/courier with enclosures

and by E-mail without attachments. The deadline for the Respondents to submit

a response was set to October 30, 2000. 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 the Respondent failed to submit a Response, on November 9, 2000, the

Center sent a Notification of Respondent Default to the Respondents, the administrative

and the billing contact, by E-mail at p_moran@ASTURNET.ES.

After having received Roberto A. Bianchi´s Statement of Acceptance and Declaration

of Impartiality and Independence, on December 8, 2000, the Center appointed

him as a sole panelist. The decision date was scheduled for December 22, 2000.

Thus, the Administrative Panel finds that it has been properly constituted.

The Panel sharing the Center’s assessment, 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 discharged its responsibilities at reasonably trying to notify

the Complaint to the Respondents pursuant to Rules, Paragraph 2(a), and that

the Notification of Respondent Default was also properly notified.

There were no other submissions of the Parties, nor were extensions granted

or orders issued.

The registration agreements for the domain names at issue have been done and

executed in English by Respondent-Registrant and the Registrar. The Complaint

is in English, except for some annexes in Spanish. The Panel´s mother language

is Spanish. Complainant has requested that the proceedings be in Spanish based

on the common nationality of both Parties. No special circumstances are present

to support a finding that such a request should be granted. Therefore, as provided

in Rules, Paragraph 11, the language of this proceeding is English.

4. Factual Background

The following facts, extracted from the Complainant´s submissions are undisputed:

Since July 18, 1996 GRUPO PICKING PACK, S.A is the new name of the GRUPO HISPANO-SUIZA,

S.A. corporation. GRUPO PICKING PACK, S.A or GPP is an Spanish leading company

in outsourcing services for all kinds of companies and creative professionals.

GPP is listed on the Spanish Stock Exchange. It employs more than 2000, professionals

all over Europe and the United States. GPP offers services of digital reprography,

project management and electronic document management solutions, a wide range

of specialized office products, of e-fulfillment and logistics, as well as advanced

services and solutions and Internet communications. GPP offers business tools

to small and medium-sized companies and professionals. GPP also offers tailor-made

solutions to meet reprographic requirements of architects, engineers and graphic

designers; as well as to satisfy the needs of large and small offices, providing

them with a range of services developed by professionals or through the Internet.

GPP has subsidiary companies in Spain and other countries such as Germany, Italy,

United Kingdom and the United States, such as (1) PICKING PACK SERVICIOS LOGÍSTICOS,

S.A., which offers the EDMS System, which is the worldwide leading system in

electronic document management, to the purposes of filing, transmission and

demand printing and (2) PICKING PACK SERVICE POINT ESPAÑA, S.A., which

supplies all kinds of office material through on-line shops, catalogues, and

in more than 350 service points all over the world. GPP provides small and medium-sized

companies with telecommunication and e-business services through one of its

parent companies, OLA INTERNET, S.A.: Internet Protocol telephony, high-speed

access to the Internet, e-mail, hosting, on-line shops, safety on the Internet

and a whole wide range of B2B advanced-technology services.

GPP as such or through its predecessor in name GRUPO HISPANO-SUIZA, S.A. owns

numerous trademarks, consisting of or containing the words PICKING PACK.

- "Service Picking Pack Point (and design)". This trademark, filed

with the Spanish Trademark Register under number 2.030.567/2, (class 7) is established

for machines and machine tools; motors and engines (except for land vehicles);

machine coupling and transmission components (except for land vehicles); agricultural

implements other than hand-operated; incubator for eggs. Registration date:

July 7, 1997.

- "Service Picking Pack Point (and design)". This trademark, filed

with the Spanish Trademark Register under number 2.030.568/0, (class 9) is established

for scientific, nautical, surveying, electric, photographic, cinematographic,

optical, weighing, measuring, signaling, checking (supervision), life-saving

and teaching apparatus and instruments; apparatus for recording transmission

or reproduction of sound or images; magnetic data carriers, recording discs;

automatic vending machines and mechanisms for coin-operated apparatus; cash

registers, calculating machines, data processing equipment and computers; fire-extinguishing

apparatus. Registration date: July 7, 1997.

- "Service Picking Pack Point (and design)". This trademark, filed

with the Spanish Trademark Register under 2.030.569/9, (class 16) is established

for paper, cardboard and goods made from these materials, not included in other

classes; printed matter; bookbinding material; photographs; stationery; adhesives

for stationery or household purposes; artists’ materials; paint brushes; typewriters

and office requisites (except furniture); instructional and teaching material

(except apparatus); plastic materials for packaging (not included in other classes);

playing cards; printers’ type; printing blocks. Registration date: July 7, 1997.

- "Service Picking Pack Point (and design)". This trademark, filed

with the Spanish Trademark Register under number 2.030.570/2, (class 18) is

established for Leather and imitations of leather, and goods made of these materials

and not included in other classes; animal skins, hides; trunks and travelling

bags; umbrellas, parasols and walking sticks; whips, harness and saddlery. Registration

date: July 7, 1997.

- "Service Point (and design)". This trademark, filed with the Spanish

Trademark Register under number 2.030.571/0, (class 20) is established for furniture,

mirrors, picture frames; goods (not included in other classes) of wood, cork,

reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl,

meerschaum and substitutes for all these materials, or of plastics. Registration

date: July 7, 1997.

- "Service Picking Pack Point (and design)". This trademark, filed

with the Spanish Trademark Register under number 2.030.572/9, (class 35) is

established for advertising; business management; business administration; office

functions. Registration date: November 26, 1997.

- "Service Picking Pack Point (and design)". This trademark, filed

with the Spanish Trademark Register under number 2.030.573/7, (class 38) is

established for telecommunications. Registration date: November 26, 1997.

- "Service Picking Pack Point (and design)". This trademark, filed

with the Spanish Trademark Register under number 2.030.574/5 , (class 39) is

established for transport; packaging and storage of goods; travel arrangement.

Registration date: November 26, 1997.

- "Service Picking Pack Point (and design)". This trademark, filed

with the Spanish Trademark Register under number 2.030.575/3, (class 42) is

established for providing of food and drink; temporary accommodation; medical,

hygienic and beauty care; veterinary and agricultural services; legal services;

scientific and industrial research; computer programming; services that cannot

be classified in other classes. Registration date: November 26, 1997.

- "Service Picking Pack Point". This European trademark, filed with

the relevant register under number 683.359, is of class 9, covering the goods

and services related in the above defined Spanish trademark number 2.030.568/0

and of class 42, covering the goods and services defined in the Spanish trademark

number 2.030.584/2.

- "Picking Pack". This European trademark, filed with the relevant

register under number 912303, is of class 7, 9, 16, 18, 20, 35, 38, 39, 42,

covering the goods and services related in the above defined marks of the same

class.

- "Service Picking Pack Point". This European trademark, filed with

the WIPO under number 701867, is of class 7, 9, 16, 18, 20, 35, 38, 39, 42,

covering the goods and services related in the above defined marks of the same

class.

On January 8, 1999, grupo picking pack registered "grupopickingpack.org".

On January 9, 1999, grupo picking pack registered "grupopickingpack.com".

On January 10, 1999, Complainant registered the domain name "grupopickingpack.net".

On February11, 1999, Grupo Picking Pack registered "pickingpackdirect.net".

On September 11, 2000, Complainant registered "pickingpack.net" and

has an active web site thereunder.

According with the WHOIS database search by this Panel, Respondent ASTURNET

registered "pickingpack.com" on November 4, 1998. On the same day

Respondent Mr. Moran registered "pickingpack.org".

Since both domain name registrations are in "Active" status, Respondents are

bound by the ICANN Policy which is in effect for the registrar and the registrants

(now the Respondents in this proceeding). The Policy may therefore be invoked

by Complainant as the legal basis for this Panel´s jurisdiction, which has not

been contested by Respondents, by their default.

5. Parties’ Contentions

A. The Complainant contends that:

- The domain names at issue are identical and/or confusingly similar to the

marks of Grupo Picking Pack, S.A.

- In the summer of 1996, GRUPO PICKING PACK, S.A. requested the registration

of the numerous marks including the words Picking Pack

- When GPP was aware of the importance of the Internet, it proceeded to register

several Top Level Domain names.

- GPP is doing a commercial use of the web site "www.pickingpack.es".

- Mr. Próspero Morán or ASTURNET, S.L. (moreover jointly referred to as THE

RESPONDENTS) have no right or legitimate interests with regard the domain names

at issue. They recorded the TLD names at issue on Nov 4th, 1998,

two and a half years after GRUPO PICKING PACK, S.A. was adopted as the new corporate

name of the company and, as previously stated, coinciding with the great commercial

development of the company and acting ‘motu propio’, without being instructed

by the company.

- A clear proof of THE RESPONDENTS’ bad faith and opportunism results from

the fact that GPP registered its TLD "www.pickingpack.net" on 11 September

1998, while THE RESPONDENTS registered the TLD Names subject of the present

claim ("www.pickingpack.com" and "www.pickingpack.org" )

on 4 November 1998, that means, less than two months after GPP has started to

register the TLD names and with an absolute and certain knowledge that GPP was

in the process of registering these TLD names.

- THE RESPONDENTS are not directors, managers or employees of the company.

They have no business interests with respect to the TLD names at issue. They

are not licensees of GPP, nor is he otherwise authorized to use the marks belonging

to the company. Definitively, they have no relationship with the company which

may have legitimated him to register the Top Level Domain names at issue.

- THE RESPONDENTS’ legitimate interest with regard to the TLD names object

of this dispute started and finished with its surprisingly and unfair registration.

- THE RESPONDENTS were aware of the wide commercial reputation of GPP both

in the Spanish and in the European market, as GRUPO PICKING PACK, S.A. has branches

in different UE countries. As we have seen, there has been no confusion or misunderstanding

in the registration of the domain names at issue, conformed with invented words.

THE RESPONDENTS registered the domain names with a perfect knowledge that GPP

was in the process of carrying out the registration of both its trademarks and

the TLDs, and with a clear and notorious will to create a impression of an association

with GRUPO PICKING PACK, S.A. intending to make profit of that.

- Under the previsions of section 2 of the Competition Defense Spanish Act

that the registration of a domain name which is identical to a notorious mark

must be considered as an unfair competition activity, against the good faith

principle applicable to the commercial relationships between parties, which

also produces confusion and which constitutes an exploitation of the reputation

of the others. This is what has happened in this case, a notorious example of

unfair competition.

- The legal representatives of GRUPO PICKING PACK, S.A. contacted Mr. Próspero

Morán by means of a notification sent to him by the Spanish Public Notary Mr.

Javier García Ruiz, requesting him to stop making use of the top level domain

names at issue, as his behavior was attempting against the property and commercial

rights of the company. Mr. Próspero Morán simply did not answered the company’s

request.

- THE RESPONDENTS have no right or legitimate interests related to the domain

names at issue. In addition, we must remember the purpose of trademarks: the

protection of the commercial interest of any company. Trademarks, as well as

domain names, are always related to a commercial activity, to the offering of

goods and services.

- The domain name "www.pickingpack.org" does not resolve to a web

site or other on-line presence. There is no evidence of advertising or promotion

on this domain name, so it must be concluded that no use is being made of this

TLD. This fact must involve a bad faith registration and use of this domain,

one of the requirements to be evidenced according to the paragraph 4(a) of the

Policy. Bad faith in the registration of this domain name is evident and related

to the fact that it was registered with no intention to make an use of it. Bad

faith use of a domain name does not necessarily involve a positive action as

long as, under certain circumstances, the omissions and inactions may evidence

the said bad faith use. This understanding is supported by Decision issued in

Telstra Corporation Ltd. v. Nuclear Marshmallows (Case

No. D2000-0003). GPP has a wide business reputation. The good and services

covered by the numerous marks owned by the company are widely known, so GPP

is the only company or individual with legitimate interests related to this

domain name. When THE RESPONDENTS registered this domain name, they intended

not to use it, as long as a sufficient period of time has elapsed since the

date of registration without having set a web site or similar on-line facility.

Therefore, we wonder why they decided to carry out the registration of this

TLD name. THE RESPONDENTS have no trade mark or other intellectual property

right to this domain name. This domain name is not the legal name of ASTURNET,

S.L., the company owned by Mr. Próspero Morán. THE RESPONDENTS are not doing

business under the domain name "www.pickingpack.org". For all these

reasons, THE RESPONDENTS registered the first TLD name at issue and are using

it in bad faith. As to "pickingpack.com", THE RESPONDENTS registered

this TLD on November 4th, 1998, less than two months after GRUPO

PICKING PACK, S.A. had started to register the TLD names containing the words

‘picking pack’. Therefore, they acted with an absolute knowledge that GRUPO

PICKING PACK, S.A. was in the process of legitimately registering several TLD

names containing the words included in its corporate name and trademarks, and

decided to take profit from this situation.

- The representatives of GRUPO PICKING PACK, S.A., once it was evident that

"www.pickingpack.com" was not available for the company, tried, in

numerous occasions, to contact the registrants of said TLD name in order to

get this TLD name transferred to the company. Unfortunately, as we have previously

seen, THE RESPONDENTS refused all the chances offered to bring this matter to

an amicable solution. Nevertheless, as a consequence of all these contacts,

THE RESPONDENTS were aware of the deep interest of the company to recuperate

the TLD. The insistence of the company evidenced so. At that moment, they thought

they could obtain a huge benefit, and decided to offer "www.pickingpack.com"

on sale.

- An e-mail was sent by Mr. Marcos Quera, who works for a specialized company

in Internet matters called Abaforum, of Spanish nationality, to Mr. Carlo

Umberto Campanini Bonomi, the President of the Board of Directors of GRUPO PICKING

PACK, S.A., and explains how Mr. Quera was surprised when, by mistake,

he acceded to the web site linked to the TLD name "www.pickingpack.com"

on January 21st, 2000 and checked the content of said page.

- Mr. Quera was really amazed with what he found in that site: "www.pickingpack.com"

was being offered on sale. Any interested person should present an offer before

February 29th, 2000, via e-mail in order to get transferred the domain.

- The above explained fact, concerning the "www.pickingpack.com"

being offered on sale is a clear evidence of registration and use in Bad Faith.

- Prior to receive any notice of the dispute and during all the year of 1999 THE

RESPONDENTS did not use "www.pickingpack.com" in connection with a

bona fide offering of goods or services. THE RESPONDENTS simply linked the domain

to a site in which "www.pickingpack.com" was offered on sale (we wonder

if this can be accepted as a fair use) as it is evidenced in the attached ANNEX

28.

- THE RESPONDENTS did not link the domain name to any active web-site before

receiving notices of the dispute, which indicates that they had no legitimate

business interest in the domain name. The e-mail dated January 21, 2000, (attached

as ANNEX 28 certifies that the registration of the Domain Name was primarily

for the purpose of selling or renting it to the Complainant for a sum exceeding

any related out-of-pocket expenses. THE RESPONDENTS’s actions therefore constitute

evidence of bad faith as described in paragraph 4(b)(ii) of the Policy.

- During all the year 1999 and several months of 2000, THE RESPONDENTS used

said TLD name in bad faith, as long as they registered it primarily for the

purpose of selling or otherwise transferring it to GRUPO PICKING PACK, S.A or

even to a competitor. We must remind that during all the year 1999, the content

of the web site linked to "www.pickingpack.com" was an offer to sell

it.

- GRUPO PICKING PACK, S.A. found it necessary to require a Notary to officially

notify him that he was attempting against the commercial interests of the company.

At that moment, more than a year and a half after the unfair registration of

"www.pickingpack.com" THE RESPONDENTS decided to modify the content

of the web page as below described.

- According to the personal information provided by himself, Mr. Próspero Morán

is said to be a shareholder of GRUPO PICKING PACK, S.A., a company which we

shall remember, quotes in the Spanish Stock Market and has a fully subscribed

and paid out share capital of Spanish Pesetas 65,504,789,858.- This means that

Mr. Próspero Morán can sell and purchase shares of GRUPO PICKING PACK, S.A.

at any moment, acquiring and loosing his shareholder’s condition according to

the stock market rules and tendencies.

- He pretends to appear as using the TLD name "www.pickingpack.com"

as a web site to express opinions, make queries and exchange information with

other GPP shareholders. In said web site it is stated that all shareholders

and investors interested in the firm will have the possibility to send comments

and opinions on the situation of the company and its stock exchange price to

be published in this forum.

- This web site also reflects that the promoters of this meeting point on Internet

are GPP shareholders concerned about the satisfactory development of the company,

and who wish through this web site to give the shareholder the opportunity to

express ideas and to be informed about any changes in GPP’s value in the stock

market. Nevertheless, Mr. Próspero Morán is not using this domain name at all.

He is only pretending to appear being using the TLD name "www.pickingpack.com"

in order to conserve it. He seems to be an Internet expert, with deep knowledge

of the ICANN rules, and thought that this apparent use may protect him.

- The contents of this web page are the same since he modified the initial

content of the page (in which the TLD name was offered on sale).

- Enclosed documents certify that no use was not being done of this domain

name during such period of time, even since before April 2000. The queries and

comments of the shareholders of GRUPO PICKING PACK, S.A. were always the same.

So, it is clear that THE RESPONDENTS intended to unfairly protect themselves

with this non-commercial use of the TLD name "www.pickingpack.com"

which, as far as we are concerned, is completely unacceptable.

- Should this meeting point be active and should their promoters contact the

Directors of the company, it may be accepted as a non-commercial fair use of

the domain name provided that THE RESPONDENTS use a TLD name which identify

them as shareholders of the company but, as long as there information published

in it is the same since long time ago, GRUPO PICKING PACK, S.A. can not accept

at all this use of the TLD name as a non commercial fair use. The company officially

notified Mr. Próspero Morán with regard to this forum by means of a letter dated

June 27th 2000, that we attach to this complaint as ANNEX 32. In

said letter, GRUPO PICKING PACK, S.A. informed Mr. Próspero Morán that the company

did not authorize said forum of shareholders and, at the same time, offered

him the possibility to set it up with any other different domain name.

- Maybe, the shareholders of GRUPO PICKING PACK, S.A. are sending their comments

and opinions to this meeting point. We do not know, although due to the high

number of shareholders of the company, it is likely to be happening on this

way. Nevertheless, what is really clear is that the promoters of this forum

were not publishing them, as long as the comments, as evidenced above, have

been the same for a long time. This is also attempting against the reputation

of GRUPO PICKING PACK, S.A. The shareholders of the company identify this web

site with the company and its managers and directors. The shareholders of GPP

believe that this has been an initiative of the company, so they are confident

to have their comments published and even answered. Nevertheless, there is no

response or publication. We wonder what they were thinking about this initiative,

surely that the managers of GRUPO PICKING PACK, S.A. were not interested in

their shareholders. Is this acceptable? We are sure that the answer shall be

no. We wonder how the promoters of this site can be concerned about the satisfactory

development of the company since they are willingly attempting against its commercial

development, causing with their bad faith actuation a notorious prejudice to

GRUPO PICKING PACK, S.A.

- When they were sure that the company would not accept any sort of blackmail,

THE RESPONDENTS decided to modify the content of the web site (they knew that

this fact represented a clear evidence of their bad faith) including a shareholders’

forum. This can not be accepted as a fair use, even as a use. We wonder why

THE RESPONDENTS waited for more than a year and a half to set up this forum

if it was their initial intention when registering the TLD name "www.pickingpack.com."

And we also wonder why the modifications of the content of the web site coincided

with the official notifications sent by the company, which revealed the clear

intention of GRUPO PICKING PACK, S.A. to do everything possible in order to

recuperate the domain name. THE RESPONDENTS, mainly Mr. Próspero Morán, appear

to be Internet experts, with deep knowledge of the ICANN rules and the WIPO

decisions.

- Mr. Próspero Morán has confirmed us in numerous occasions, verbally, that

he is sure that GRUPO PICKING PACK, S.A. will never recuperate the domain "www.pickingpack.com".

He pretends to prevent GRUPO PICKING PACK, S.A. from requesting the WIPO protection,

as he supposes that the non-commercial use of the forum of shareholders is protecting

him. We do not agree at all, as his bad faith has been evidenced in numerous

occasions, and this forum is just an appearance of fair use which was set up

when he was sure GRUPO PICKING PACK, S.A. was not going his blackmail.

B. Respondents have not submitted a Response, are in default and after the

notification of their default have not made any submissions whatsoever.

6. Discussion and Findings

Identity and Confusing Similarity

Complainant has rights on numerous trademarks which consists of or contain

the words PICKING PACK.

A simple comparison of the domain names at issue and the "PICKING PACK" marks

of the Complainant leads the Panel to find that the domain names "pickingpack.com"

and "pickingpack.org" are, having in mind the inclusion of the ".com"

and "org" gTLDs in the domain name registrations, at least confusingly similar

to the "PICKING PACK" marks of the Complainant.

The Complainant has met its burden under Policy, Paragraph 4(a)(i).

Lack of Rights and Legitimate Interests

The Complainant has specifically denied that the Respondents have any right

or legitimate interest in the domain names. According to Rules, Paragraph 5(b)(i)

and 5(b)(ix) Respondent generally bears the burden to specifically respond to

the Complaint, and to present any documents in its favor. In order to prove

rights and legitimate interests in the domain name Respondent may, for instance,

refer to Policy, Paragraph 4(c). In principle Respondents´ default does not

favor them. However Complainant must still prove all requirements of Policy,

Paragraph 4(a).The Panel will now analyze the situation in respect of the two

challenged domain name registrations:

A. "pickingpack.com":

On December 10, 2000, the Panel has independently visited the "www.pickingpack.com"

web site of the Respondent, which shows a text (in Spanish) stating 1:

"Picking pack Group - Shareholders´ Forum

"www.pickingpack.com"

The Picking Pack shareholder has now its place on the Net to express its views,

to ask for advice and to share information with other Picking Pack Group´s shareholders.

Any shareholder or investor interested in the Picking Pack company can to send

its comments and views about the company and its performance in the stock market

for publication on this forum.

The creators of this meeting point on the Internet are GPP shareholders worried

about the good performance of the company, and who through this space on the

Net would like shareholders to express their views and to know what is going

on with the GPP stock".

There is another text inviting GPP shareholders to send their messages about

the company.

To express any opinion including harsh criticism on the Internet no matter

the subject is undoubtedly a legitimate exercise of the freedom of speech, as

protected under the Spanish Constitution (Article 20) and the Universal Declaration

of Human Rights. Quite another thing is using a third party's trademark as a

domain name under which a web site for the posting of criticism or opinion is

operated.

Several decisions have stressed the independence of the legitimacy of criticism

together with the illegitimacy of choosing a third party´s mark as a domain

name for the web site under on which such criticism is posted.

In WIPO Case D2000-0020 Compagnie de Saint

Gobain v. Com-Union Corp it was said:

"When registering the Domain Name (as well as "airliquide.net" and

air-france.net), Respondent clearly intended to us[e] it to voice opinions,

concerns and criticism with regard to the management and activities of Complainant

and affiliated companies within the Saint-Gobain group(...)". "It goes without

saying that shareholders or other interested parties have the right to voice

opinions, concerns and criticism with respect to a listed company and that the

Internet constitutes an ideal vehicle for such activities. The issue at hand

is however not as Respondent seems to contend, the freedom of speech and expression

but the mere choice of the domain name used to exercise this inalienable freedom

of speech and expression. Respondent could have chosen a domain name adequately

reflecting both the object and independent nature of its site, as evidenced

today in thousands of domain names."

In WIPO Case D2000-0071 SA International a.k.a.

Canadian Standards Association v. John O. Shannon and Care Tech Industries,

Inc. the panelist said:

"Respondents claim to rights and legitimate interests is essentially based

on a claim to freedom of speech and, expression of opinion, but that right does

not require the use of Complainant's trade marks in the domain names for that

purpose."

In WIPO Case D2000-0266 Geniebooks.com Corporation

v. William E. Merritt the Panel said:

"To allow a dissident shareholder or purported shareholder to appropriate

a domain name of an existing corporation is not such a [bona fide] use and certainly

is not a noncommercial or fair use without intent for commercial gain."

In WIPO Case D2000-0299 Monty and Pat Roberts,

Inc. v. Bill Keith it was said: "However, the right to express one’s

views is not the same as the right to use another’s name to identify one’s self

as the source of those views. One may be perfectly free to express his or her

views about the quality or characteristics of the reporting of the New York

Times or Time Magazine. That does not, however, translate into a right to identify

one’s self as the New York Times or Time Magazine." "In the instant case,

Respondent is using as its identifier the domain name "montyroberts.net".

When an Internet user searches for Complainant’s mark, it will find Respondent’s

website address. There is nothing in the domain name to indicate that the site

is devoted to criticism of Complainant, even though this criticism is apparent

upon visiting Respondent’s site. By using Complainant’s mark, Respondent diverts

Internet traffic to its own site, thereby potentially depriving Complainant

of visits by Internet users."

Similar views were expressed by the Panels in WIPO Cases D2000-0431

Bandon Dunes L.P. v. DefaultData.com, D2000-0669

Sears, Roebuck and Co. v. Hanna Law Office and D2000-0856

New York-Presbyterian Hospital v. Tim Harris.

The Panel also notes that Respondents have not included any statement on their

web site that it is not the official web site of the GPP company. Nor have Respondents

included any link to such official GPP web sites ("www.pickingpack.net"

and "www.pickingpack.es"). Such omissions further contribute to the

actual confusion of Internet surfers who happen to get connected to the Respondents´web

site while looking for the web site of the Complainant. Further, the web site

of the Respondents even includes a statement that those responsible for the

web site are in a good position to reach the management of GPP. This statement

is most likely leading Internet surfers to believe that the web site creators

are affiliated with, authorized by or somehow related to GPP management or the

GPP company itself. All this cannot reveal any right or legitimate interest

in the domain name.

B. "pickingpack.org"

On December 10, 2000, the Panel also visited independently the "www.pickingpack.org"

web site, which resulted in an automatic re-direction to a web page with a text

stating: "Coming Soon! We recently registered our domain name at... register.com",

located at "http://futuresite.register.com/futuresite.shtml". This

means that the web site "www.pickingpack.org", for all practical purposes,

is not being actively used, which prevents the Panel to find that Respondent

in default has rights or legitimate interest in the domain name.

Furthermore none of the Respondents replied to the notarized cease-and-desist

letter that the Complainant sent them on May 28, 1999. No statement of Respondents´

rights on the domain names could thus be obtained.

For all the reasons above the Panel finds that the Complainant has met its

burden under Policy, Paragraph 4(a)(ii), in that the Respondents lack rights

or legitimate interest in the domain names at issue.

Bad Faith Registration

Complainant has made compelling assertions and convincingly evidenced in its

Complaint (un-contested by Respondents) that the primary purpose of Respondents

at the time of the domain name registrations was selling the domain names registrations

to the Complainant for profit, which is a circumstance of bad faith registration.

Policy, Paragraph 4(b)(i) states:

"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".

All the evidence submitted by Complainant and the default of the Respondents

lead the Panel to conclude that Complainant´s assertions are right in this respect.

Rules, Paragraph 14 states:

"(a) In the event that a Party, in the absence of exceptional circumstances,

does not comply with any of the time periods established by these Rules or the

Panel, the Panel shall proceed to a decision on the complaint".

The Panel thus finds that the Complainant has met its burden under Policy,

Paragraph 4(a)(iii), in that the domain names were registered in bad faith.

Use in Bad Faith

A. "pickingpack.com"

The Panel´s independent visit to the "www.pickingpack.com" web site

showed that there are many views expressed in the forum whose authors seem to

believe that they have contacted the official web site of the GPP company: Carlos

Martins´ message from Portugal asking for information about how to get a franchise

from GPP; David´s message about how to get a price list; Lorenzo González Guillén´s

offer to present its catalog on management software; nachete´s message asking

about the franchises granted by GPP; Eduardo Lopez -Bravo Arnaiz´s looking for

a commercial contact with GPP; Sonia Pulgarin´s message asking about the GPP´s

field of business, address and telephone number; Rafael Crespo asking GPP to

send him a shareholder´s card; José Kluis Freire asking GPP for a brochure;

javier´s message who lives in Gijón asking about the nearest GPP center; dreina´s

asking for GPP office hours; José Vicente Alfonso Aguado´s message asking GPP

about its address to send a resumé; Rafael Fernandez´s message from Cardiff

asking for the address of GPP to send a resumé; Fracesc Romero I Segarra´s asking

for a list of GPP agencies in Esplugues de Llobregat or St. Just Desvers; Albert

Canals´message complaining to GPP about computers; Mariano-Perez Cruzado´s message

proposing integrated logistics to GPP; jcir´s message requesting GPP a promised

gift: Freshmar´s message asking GPP for information about its products: A. Sanchez´s

message asking for the company´s address and services; Sendjerry´s message asking

about GPP high speed Internet services, etc.

All these messages together show that confusion caused by the web site with

the Complainant´s company name and trademarks is not merely a possibility, but

a real fact. Respondent is looking for commercial gain at selling the domain

name to the Complainant, thus incurring in the bad faith use circumstance of

Policy, Paragraph 4(b)(iv) which reads:

"(iv) by using the domain name, you have intentionally attempted to attract,

for commercial gain, Internet users to your web site 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 web site or

location or of a product or service on your web site or location." Panel´s

emphasis.

B. "pickingpack.org"

For all practical purposes, the web site corresponding to the domain name is

inactive, as shown in the independent visit by the Panel, and which has not

been contested by Respondent. This does not mean that there is no use of the

domain name. Many decisions in WIPO cases have addressed this very issue. In

particular Case D2000-0003 Telstra Corporation

Limited v. Nuclear Marshmallows established a sound criterion where inactivity

and relevant circumstances, if present, allow a finding of bad faith use. In

the instant case the Panel considers the following relevant circumstances:

a) The permanence of the present domain name registration, together with the

registration by related Respondent ASTURNET of the "pickingpack.com"

domain name equals to prevent the Complainant from reflecting its well known

PICKING PACK trademarks in the corresponding domain names and to conduct business

on the Internet thereunder.

b) The present inactivity of the web site under the domain name at issue leads

to possible confusion among Internet users - including present or eventual customers

of the Complainant - who may be looking for the web site of the Complainant

by using any current browser. The inactivity of the web site may lead Net surfers

to believe that the Complainant does not own a web site, or that it is unable

to have one.

c) All parties are resident in Spain. It is generally accepted by WIPO Panels

- and this acting panelist - that when the Parties are residents of the same

country panels may look to the law of such country, as deemed applicable by

the panel, and to judicial decisions thereunder. See WIPO

Case D99-0001 World Wrestling Federation and many others accepting

its reasoning. Under similar circumstances Spanish Courts have granted preliminary

injunctions against the domain name holders of "nocilla.com" and "metacampus.net"

based on the Spanish Trademark Act of 1988, and the Unfair Competition Act of

1991, in cases where the plaintiffs were the owners of trademarks to which the

challenged domain name registrations were identical or confusingly similar.

See WIPO Cases D2000-0163 Raimat, S.A.,

D2000-0219 Uralita, S.A., D2000-0467

METRO BILBAO, S.A., D2000-0592 Canonais,

S.A., D2000-0883 Antena 3 de Televisión,

S.A.and D2000-1026 Bodegas

Vega Sicilia, S.A. v. www.portaldedominios.com.

These circumstances together lead the Panel to conclude that the Complainant

has met its burden under Policy, Paragraph 4(a)(iii), in that the domain name

"pickingpack.org" is also being used in bad faith.

7. Decision

The Panel has found that the domain names "pickingpack.com" and "pickingpack.org"

are confusingly similar to the marks of the Complainant consisting of or containing

the distinctive words "PICKING PACK". Further, Respondents have no rights to

or legitimate interests in said domain names. The Panel has further found that

the domain names have been registered in bad faith, and that they are being

used in bad faith.

Therefore, pursuant to Policy, Paragraph 4(i), and Rules, Paragraphs 14(a)

and 15, the Administrative Panel requires that the registration of the domain

names "pickingpack.com" and "pickingpack.org" be transferred

to the Complainant GRUPO PICKING PACK, S.A.

Roberto A. Bianchi

Sole Panelist

Dated: December 18, 2000

Footnotes:

1. Unofficial translation from

the Spanish original by this panelist.