Mercadona, S.A. v. Trenet - Imagen y Comunicación

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Mercadona,

S.A. V. José Delgado Hueso

Case No.

D2001-0227

1. The Parties

The Complainant is MERCADONA,

S.A. a company based in Valencia, España, with

its principal place of business located at Calle Valencia, 5, Tavernes Blanques,

España (the "Complainant).

The Respondent is Mr. José

Delgado Hueso, who resides at C/ Ramón Gordillo nº 5, 8, Valencia, España

(the "Respondent").

2. Domain Name and Registrar

The domain name at issue

is <hacendado.com>. The registrar is Namesecure, Inc.(the "Registrar")

of Concord, California, United States of America.

3. Procedural History

The WIPO Arbitration and

Mediation Center (the "Center") received the Complaint of MERCADONA,

S.A. on February 12, 2001, by email and in hardcopy.

The Complainant made the

required fee payment.

The Center sent to the

Registrar, a request for verification of registration data which was answered

in February 16, 2001, when the Registrar confirmed, interalia, that the

domain name in dispute was registered through the Registrar, that the "current

registrant" is the Respondent, and that the domain name is active.

Having verified that the

Complaint satisfied the formal requirements of the ICANN 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 Dispute Resolution Policy ("the Supplemental Rules") the Center

sent the Respondent a notification under Paragraph 2(a) of the Rules, together

with copies of the Complaint on March 1, 2001.

The Respondent answered

to the Complaint by e-mail on March 20, 2001, and in hard copy on March 23,

2001. The Center sent an acknowledgement of Response on March 21, 2000.

On April 24, 2001, after

receiving his completed and signed Statement of Acceptance and Declaration of

Impartiality and Independence, the Center appointed Mr. Antonio Millé

as the single member of the Administrative Panel (the "Panelist").

On the same date, the Center notified the parties of this appointment.

On May 2, 2001, the Panelist

received via courier a complete copy of the Complaint, the Response, and the

corresponding enclosures. On the same date, the Panelist asked for a prorogation

of the term for the production of the Decision, being accepted the petition

by the Center, that affixed May 16, 2001, as day of expiration of the term to

produce a decision in the present case.

4. Factual Background

The trademark upon which

the Complaint is based is HACENDADO. As per the information provided by Complainant,

that the Respondent did not deny, the status of this trademark is the following:

a) MERCADONA has registered

before the Spanish Oficina Española de Patentes y Marcas:

- "HACENDADO",

registered on July 5, 1988 as a Class 33 trademark, with registration number

1182185.

- "HACENDADO",

registered on February 4, 1994 as a Class 30 trademark, with registration number

1777320.

- "HACENDADO",

registered on July 5, 1996 as a Class 29 trademark, with registration number

2006994.

- "HACENDADO",

registered on July 5, 1996 as a Class 31 trademark, with registration number

2006995.

- "HACENDADO",

registered on July 5, 1996 as a Class 32 trademark, with registration number

2006996.

- "HACENDADO",

registered on September 5, 1996 as a Class 1 trademark, with registration number

2011979.

- "HACENDADO",

registered on September 5, 1996 as a Class 5 trademark, with registration number

2011980.

b) MERCADONA has also registered

before the Office for Harmonization in the Internal Market the following trademarks:

- "HACENDADO",

requested on July 7, 1999 and registered on September 19th 2000,

as a Class 1, 5, 29, 30, 31, 32 and 33 trademark, with registration number 1236876.

- "EL GRAN VIÑEDO

DE HACENDADO", requested on July 15, 1999 and registered on September 25,

2000 as a Class 30, 32 and 33 trademark, with registration number 1242064.

- "HACENDADO",

requested on May 15, 2000 as a Class 2, 6 and 16 trademark, with request number

1655612.

The Complainant proved

also that it is the registrant of different domain names, allegation that shall

be not examined here because it is undifferent for the Case decision.

On June 6, 2000, the Respondent

filed before the Spanish Patents and Trademarks Office an application of registration

of the trademark HACENDADO, under the 36 Class, for the development of real

estate activities. The Claimant filed an opposition writ to such a request,

being pending the resolution of the matter.

The Complainant asserts

that it is "the leading distribution company in the sector of supermarkets

in Spain .. focused in the distribution of alimentary and household products

for consumption .. has 493 supermarkets spread all over Spain .. 199 of them

in the Autonomous Community of Valencia. "

The Complainant declares

that "the use of private labels in order to offer products at economic

prices has been one of the key elements for the economic growth of the Complainant"

attesting that the trademark HACENDADO identify one of its private labels. As

per the Complainant, "the total turnover derived from the products distributed

under the "HACENDADO" trademark in 2,000 has been of almost 97,188

million pesetas (584,11 million e ), being 1,045 products distributed under

such a trademark". The Respondent sustained that the Complainant has never

publicized the trademark HACENDADO.

The Respondent declares

to be "an Internet professional, a field in which he has been operating

for more than three years under his own name or under the name of the company

TRENET-Imagen y Comunicación .. works and collaborates with different

official institutions, universities, public and private enterprises, newspapers

and charity organizations who seek his professional expertise".

The Complainant alleges

as evidence of a behavior of the Respondent that he registered the domain names

<bancajamediterraneo.com> and <bancaja-cam.com> similar to the denomination

of important Spanish banks as well as the domain names <circuitodecheste-dom.com>

and <circuitoricardotormo-dom.com> similar to the denomination of a race

circuit well known in the Valencia’ area (as per the Complainant, additional

evidence of behavior derives from the fact that the Respondent requested the

trademark CIRCUITO DE CHESTE provoking the opposition of the enterprise exploiting

the racing circuit). The Panelist researched the Wohis database, finding

that the two domain names first mentioned are "free" at the present,

being registered at the Respondent name (or at the name of his business TreNET)

only the domain names <josedelgado.com>, <valencianet.com>, <hacendado.com>,

<circuitodecheste-dom.com>, <circuitoricardotormo-dom.com>, <minidiario-dom.com>,

<valencianet-dom.com>, <bancaja2-dom.com>, <tiendawap3-dom.com>

and <telefoniawap-dom.com>.

Both parties agree that

in an imprecise date, that the Complainant describes as "prior to filing

this Complaint", the Complainant contacted "by telephone" the

Respondent in order to make an offer for the transfer of the disputed domain

name, being the Complainant "last offer, amounting up to 250,000 pesetas

(e1,502.53 e )" rejected by the Respondent’s representative. The Respondent

affirms that his representative "offered a similar amount to MERCADONA

in return" for the rennouncement to claims related with the disputed domain

name.

The Panelist verified that

the use of the disputed domain name as "address" in an Internet navigation

tool redirects to the Respondent’s personal Web site in <josedelgado.com>

where by clicking on the image included in the first page it is obtained access

to TreNET’s Web site in <valencianet.com>.

5. Parties' Contentions

5.1 Complainant contends

that:

a) The only difference

between the Complainants trademark and the disputed domain name is that this

one includes the extension corresponding to the Generic Top Level Domain ".com".

b) The respondent should

be considered as having no rights or legitimate interests in respect of the

<hacendado.com> domain name because:

i) the purpose of the Respondent

in registering the domain name: "as the Respondent lives in Valencia were

the Complainant trademarks are well-known and he has no relationship neither

with the Complainant nor to its trademarks, it must be concluded that the registration

of the disputed domain name the only goal of impede the Complainant to use its

trademark as domain name, forcing the Complainant ‘to pay an amount clearly

in excess of the out-of-pocket costs".

ii) The Respondent does

not develope any commercial activity connected with the name "hacendado"

in more than one year.

iii) The Web site acceded

by the domain name in dispute has not any specific content from the registration

date of said domain up to date.

iv) The Respondent have

not rights on the trademark HACENDADO, because:

- The Complainant is the

only holder of the rights related to the HACENDADO trademarks. The fact that

the Respondent requested this trademark under Class 36, for the development

of real estate brokerage services, is not an obstacle for considering that the

Respondent has no rights on the above mentioned trademark.

- It is a behavoir of the

Respondent to request trademarks corresponding to domain names he registered

as he does in the case of the trademark CIRCUITO DE CHESTE and the domain name

<circuitodecheste.com>.

c) the domain name should

be considered as having been registered and used in bad faith, because:

i) The Respondent registered

with bad faith the domain name in dispute, as arises from:

- The Respondent lives

in Valencia, which is the province in Spain where the Complainant has a more

significant implantation, being the products marketed under the HACENDADO trademark

distributed through the MERCADONA network of supermarkets.

- The Respondent registered

the domain names <bancajamediterraneo.com> and <bancaja-cam.com>

when the two most important saving banks in Valencia were discussing a merger,

rennouncing to this registration when the deal sunk, and is currently the registrant

of the domain name <bancaja.com> coincident with the name of the most

important saving bank in the province of Valencia.

- The Respondent does not

offer real estate services neither by himself nor through TRE-NET. Actually,

the web site linked to the disputed domain name is not referred at all to but

it redirects to the TRE-NET’s corporate web site which is only focused on web

design and Internet advising services.

ii) The Respondent use

with bad faith the domain name, as is probed by:

- The Respondent’s passive

attitude by just redirecting the Internet users to Tre-NET’s web site. Such

an attitude must be considered as a behaviour in bad faith under two possible

points of view: (1) as a bad faith passive behaviour, (2) as an attempt to sell

the disputed domain name to the Complainant for a valuable consideration in

excess of the reasonable out-of-pocket costs.

- The implicit purpose

of the Respondent of impeding the use on the Internet of one of the most valuable

Complainant’s trademarks, impeding therefore the normal development of its online

activities.

5.2 Respondent contends

that:

a) "In Spain and other

Spanish-speaking countries, the meaning of the word HACENDADO (landowner) is

not related to alimentary industries at all, but to real estate brokerage concepts".

b) Once registering the

domain name in dispute, the Respondent was unaware of the use of HACENDADO as

Complainant’s trademark, "since he was not a customer of its supermarkets

and did not know its particular trademarks better than those of other supermarkets

such as: Carrefour, Enaco, Grupo Bravo, Hipercor, Alcampo, Eroski, Consum".

c) No confusion seems possible

among such diverse activities as foods and real estate, and the Defendant "can

not possibly intend to take profit from an alimentary trademark that has not

been disseminated nor publicized"

d) The respondent requested

the disputed domain name, on September 2, 1999, more than a year before the

complainant did so with the domain names with the same content in ".net"

an ".org" gTDL’s. If he had acted in bad faith, he would have then

registered all the domains.

(e) The Complainant’s presented

an erroneous Whois database listings, including domain that are not held by

the Defendant.

(f) The trademark HACENDADO

was never been publicized and it is therefore unknown to most people outside

the complainant’s environment, reason for which the Respondent ignored the existence

of a trademark of alimentary products bearing this name at the time of the domain

name registration.

(g) The most evident prove

of the Respondent’s good will is the incorporation of HACENDADO S.L., a society

which object is real estate brokerage, in January 25th 2001, before being informed

the Respondent of this complaint and aware of this controversy.

(h) The Respondent has

started his activity with views towards the future as in probed by means of

the correspondence with clients he annex to the Response. After the reaction

of the Complainant, he "has sought legal advice and has remained prudent

in waiting for all the necessary legal information for then acting accordingly

and demanding the cease of all hostilities through jurisdictional measures".

(i) The Respondent "has

never Contacted the complainant and it was the complainant who offered to buy

something that the respondent was not willing to sell. As mere response to the

complainant’s menaces, the respondent has asked it to contact his lawyer".

6. Discussion and Findings

The Policy institutes in

Paragraph 4(a) the cumulative elements that shall be proved by the Complainant

to succeed in an administrative proceeding for abusive domain name registration.

We will examine each one of these elements in the following points.

"4.a.(i) Identity

or Confusing Similarity"

Being the ".com"

extension an attribute of the gTDL, common to all the domain names under this

TDL, there is no possibility to discuss that the trademarks HACENDADO is not

identical to the domain name <hacendado.com>. Therefore, the requirement

of Paragraph 4.a.(i) is met.

"4.a.(ii) Absence

of Respondent Rights or Legitimate Interest in the Domain Name"

As per the information

both parties provided in this case, the first contact between them was the telephonic

call that the Complainant made to the Respondent (and then to the Respondent’s

lawyer) in an imprecise date before the filing of the Complain (issued in February

12, 2001). In this way, the Panelist shall assume that until the beginning of

February 2001, the Respondent lacks of any notice about the intention of the

Complainant of disputing the domain name <hacendado.com>.

Before the beginning of

February 2001, the Respondent:

- Offered real state brokerage

services online to different clients (March and May, 2000).

- Applied (in June 6, 2000)

for the registration of the trademark HACENDADO in class 36 in a pending procedure

where exist an apposition of the Complainant.

- Incorporated (in January

25, 2001) the commercial society HACENDADO SL.

These circumstances are

in the Panelist opinion sufficient demonstration that the Respondent:

- before any notice of

the dispute, make preparations to use the domain name in connection with a bona

fide offering of real state brokering services; and

- have acquired legal right

to identify his real state services brokering business with a corporate denomination

identical to the domain name.

In this way, the Panelist

concludes that the Complainant failed in demonstrating that the Respondent have

not rights or legitimate interest to the domain names for purposes of Paragraph

4(a)(ii) of the Policy, and that the Respondent has demonstrated the existence

of the circumstances alluded in paragraphs "i." and "ii."

of section 4.c. of the Policy.

On these bases, the Panelist

concluded that the respondent has legitimate interest in the domain name <hacendado.com

>. Therefore, the requirement of Paragraph a.(ii) is not met.

"4.a.(iii) Respondent

Registration and Use of the Domain Name in Bad Faith"

First of all, it shall

be remembered that in Spanish language, the word "hacendado" is the

tense of a verb and an adjective of relatively frequent use:

Hacendado, da. p.p.

de hacendar.2. adj. Que tiene hacienda en bienes raíces, y comúnmente

se dice sólo del que tiene muchos de estos bienes. .. 3. Argentina y

Chile. Dícese del estanciero que se dedica a la cría de ganado.

Real Academia Española Diccionario - 1992, p. 763

Considering the will of

the Respondent in registering and using a domain name containing this word,

it is obligatory to take into account that the word "hacendado" is

a generic word in the Spanish language, and that for it meaning should be associated

by the public more with something related with the possession of lands and buildings

than with any other thing. Also in areas of the world where the Spanish is not

the official language -as for example California State where the Registrar is

based- the family of words coming from the verb "hacendar" are familiar

to the public (for example, "Hacienda Heights" it is the name of a

Californian town).

Absent a probe by the Complainant

of circumstances evidencing bad fait, the Panelist shall conclude that the Respondent

choose the domain name not to take profit of the trademark of the Complainant

but to "making profit from (the) descriptive character of this domain name"(Footnote

1). Other should be the presumption if the trademark of the case were a

fantasy word or an special combination of common words, making implausible other

cause of election as domain name than the purpose of refer to the trademark

owned by a third party.

The fact that the Respondent

lives in the same city where the Complainant have an important number of supermarkets

exhibiting and selling products distinguished with the "private label"

registered by the Complainant as trademark, does not change the appreciation

of the facts by the Panelist. First, because a "private label" is

precisely the opposite of a notorious trademark and it is acceptable the affirmation

of the Respondent about that he was "unaware of the use of HACENDADO as

Complainant’s trademark". Second, because there are not any obligation

by the Internet users of avoiding the use of trademarks as domain names: the

sole obligation that the Policy established is the one of not making abusive

use of trademarks as domain names. If an Internet user is attracted by a common

word ("sun", "yachting", "flower", "lawyer",

etc.) that she or he know that it is used by one or by hundred of third parties

as trademark, and acting with good will, she or he register this common word

as a domain name, they are acting between the limits of her or his rights, out

of the relatively narrow area of "abusive registrations" covered by

the Policy. So the eventual knowledge by the Respondent of the Complainant trademarks

(circumstance not proved by the Complainant and expressly denied by the Respondent)

should not be in any way per se an evidence of bad will.

To examine the existence

of good will or bad faith, it is advisable to review the parties allegations

about the circumstances mentioned in the non-exhaustive list of bad faith evidence

enclosed in the four paragraphs of section 4.(b) of the Policy:

About 4.(b)(i):

The Complainant has not

probed that the aim of the Respondent in registering the domain name was to

"selling, renting, or otherwise transferring the domain name registration

to the complainant .. for valuable consideration in excess of .. (the) .. documented

out-of-pocket costs directly related to the domain name".

The Complainant affirms

that its part approaches the Respondent making an offer to buy the domain name

but no element evidence that the Respondent took profit of the contact to ask

for an amount out of proportion with the "out-of-pocket costs directly

related to the domain name".

About 4.(b)(ii):

The Panelist does not find

proved that the Respondent have "registered the domain name in order to

prevent the owner of the trademark from reflecting the mark in a corresponding

domain name" nor that the Respondent is "engaged in a pattern of such

conduct". The Complainant consider "implicit" the purpose of

the Respondent of "impeding the normal development of its online activities"

but no element in the case shows that this purpose really exist.

The Policy alluded to an

active and deliberate obstructive conduct nor to the mere registration of an

isolated domain name. An evidence of bad will aimed to prevent the use of the

trademark as domain name could be the registration of a fantasy trademark or

of a trademark formed by an special combination of common words, or the registration

of multiple domain names with variations of a trademark containing a common

word (there are different examples of this misconduct in previous cases of the

Center) and the repetition of this conduct in prejudice of different trademark

owners could evidence a "pattern of conduct". These circumstances

were not probed in the case and -according to the characteristics of the relationship

between the parties that arisen from the documentation- the registration by

the Respondent of the domain names <circuitodecheste-dom.com> and <circuitoricardotormo-dom.com>

can not be considered as evidence of the conduct described by paragraph 4.(b)(ii)

of the Policy in prejudice of a third party.

About 4.(b)(iii):

The Complainant and the

Respondent acts in completely different professions and sectors of the market,

not being in consequence "competitors" the one of the other.

About 4.(b)(iv):

The generic nature of the

word "hacendado" makes it difficult to accept that it mere use as

domain name could per se (in absence of bad will maneuvers as the use

of suggestive meta tags or deceptive content) "attract .. Internet

users (looking for the Complainant private label products) to a web site"

nor create "a likelihood of confusion with the complainant's mark as to

the source, sponsorship, affiliation, or endorsement of the web site".

It is true that in the

unusual event that a consumer of the private label products distinguished by

the HACENDADO trademark were trying to connect the Complainant entering <hacendado.com>

as "address" in a navigation tool would reach an Internet location

of a different owner and with different content, but this is a normal risk that

shall accept those using generic terms as trademarks and those that do not takes

the necessary measures to be the first in coming to a registrar applying for

the generic term as domain name, to be also the first served with this domain

name (Footnote 2).

The UDRP is a mean to restore

balance and equity when the "first comes and first served" registered

and used the domain name with bad will, abusing of the right of a trademark

owner. If this bad will it is not proved by the trademark owner (that as per

the Policy have the burden of proof) the mere coincidence between the trademark

and the domain name does not serve as basis for a domain name transference or

cancellation claim.

Because of this, the Panelist

arrives to the conclusion that the Complainant has not probed that the Respondent

has registered and used the <hacendado.com> domain names with bad faith.

Therefore, the requirement of Paragraph 4.a.(iii) is not met.

7. Non-existence of abuse

of the administrative proceeding

Section 15, paragraph e)

of the Rules require that once rejecting the complain the panels in certain

cases include in the Decisions a declaration about the eventual Complainants

bad will. Notwithstanding that this declaration it is not obligatory, for better

understanding the Panelist manifests that he does not consider that in the present

case the Complainant acted with bad faith or that abused of the administrative

proceeding.

Said that, the Panelist

shall manifest that the use by the Complainant as evidence of a Whois

report were the name of the Respondent is confused with the ones of different

homonymous was motive for reflection once examining this point of the Decision.

At the end, the Panelist conceded the Complainant the benefit of the doubt and

accepted that there are not evidence of use of the document and the information

contained in it with bad faith.

8. Decision

The Complainant has proved

that the domain name is identical to its trademarks, but has not proved that

the Respondent has no rights or legitimate interest in the domain name, and

that the Respondent registered and used the domain name in bad faith. Therefore,

according to Paragraph 4.(i) of the Policy, the Panel denied the relief sought

by Complainant with respect to the Domain Name <hacendado.com>.

Antonio

Millé

Sole Panelist

Dated: May

16, 2001

Footnotes:

1. "Respondent’s explanation

that it selected the domain name because it is the Spanish and Italian word

for "book" appears prima facie acceptable. It is a fact that registrations

of generic words have acquired considerable commercial value and represent an

important asset in electronic commerce especially in a trade sector where product

marketing through the Internet has become vitally important as it is for the

book industry. Under these circumstances it is not likely that the Respondent

has chosen the domain name with the intent to profit or otherwise abuse Complainant’s

trademarks, but, in contrast, it appears reasonable to believe that the Respondent’s

allegation that it has registered the domain name for making profit from descriptive

character of this domain name is correct". LIBRO AG v. NA Global Link Limited

Case No. D 2000-0186 https://www.wipo.int/amc/en/domains/decisions/html/2000/d2000-0186.html.

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2. "Registration

of a generic term as a domain name is possible under the ‘.com’ TLD and such

domain names often have a significant commercial value. In contrast, a generic

term cannot be monopolized as a trademark for the goods or services indicated

by its common dictionary meaning". Notar Eiendom AS v. LIPnet Case No.

D2000-1070 https://www.wipo.int/amc/en/domains/decisions/html/2000/d2000-1070.html.

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