Telefonica comunicaciones Personales S.A.; Telefonica de Argentina S.A. / Telefonica de España v. Unifon AE

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Telefónica

Comunicaciones Personales, S.A. and Telefónica de Argentina, S.A. and

Telefónica de España, S.A. v. Unifon AE

Case No.

D2001-0407

1. The Parties

The Complainants are Telefónica

Comunicaciones Personales, S.A., Telefónica de Argentina, S.A. and Telefónica

de España, S.A. The Complainants are part of a holding where Telefónica

de España, S.A. is the mother company. Complainants are based in Spain,

Argentina, Brazil and Perú (hereinafter, Complainants). The Respondent

is Unifon AE, which available information is as follows: P. Marinopoulou 7 Alimo,

Athens, 15456, Greece (hereinafter, the Respondent).

2. Domain Name and Registrar

The domain name at issue

is <unifon.com>. The Registrar is Network Solutions, Inc.,

Herndon, Virginia, United

States of America.

3. Procedural History

The WIPO Arbitration and

Mediation Center (hereinafter, the Center) received the Complaint by e-mail

on March 22, 2001, and in hardcopy on April 2, 2001. On

March 27, 2001, the Center

sent the acknowledgement of Receipt.

On April 2 and on April

6, 2001, the Center sent Complaint Deficiency Notifications. Amended Complaint

was received by the Center by electronic form on April 6, 2001, and by fax on

April 23, 2001.

On April 2, 2001, the Center

sent the Request for Registrar Verification. On May 4, 2001, the Registrar

confirmed (i) that it had received the Complaint; (ii) that it was the Registrar

of the disputed domain name; (iii) that the current Registrant is the Respondent;

(iv) the administrative and other relevant contact details; (v) that the UDNDRP

is applicable, and finally (vi) that the domain name is in <active> status.

After verifying that the

Complaint met with the formal requirements of the ICANN Uniform Domain Name

Dispute Resolution Policy (hereinafter, the Policy), the Rules and the Supplemental

Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter, "the

Rules" and "the Supplemental Rules" respectively), the Center

sent the Respondent a notification of Complaint and Commencement of Administrative

Proceeding under Paragraph 2(a) of the Rules together with copies of the Complaint

on April 25, 2001. The same notification was sent to the administrative and

technical contact, as required by Paragraph 2(a) of the Rules. The notification

was communicated by post/courier, by fax, and by e-mail. Both the Complainants

and the Registrar were also notified of the initiation of the proceedings in

accordance with the Policy and the Rules.

On May 17, 2001, the Respondent

was notified that he was considered in Default.

On June 13, 2001, after

receiving his completed and signed Statement of Acceptance and Declaration of

Impartiality and Independence, the Center appointed Mr. Jose Carlos

Erdozain as the single member of the Administrative Panel (hereinafter, the

Panelist) in accordance with Paragraph 6(f) of the Rules. On the same date,

the Center notified both the Complainant and the Respondent of the appointment

of the Panelist.

The date scheduled for

the issuance of the Panel’s decision is before June 26, 2001.

The language of the proceeding

is English.

4. Factual Background

The Complainants, and specifically,

Telefónica de España, S.A., are one of the most important services

group in the world. The scope of the activity is telephone lines, cellular phones

and telecommunications transmissions. During some years the Complainants have

carried out a full and extensive telecommunications activity not only in Spain

but also and mainly in South America. The Panelist has checked this information

by accessing the Site <telefonica.es> and specifically <telefonica.com.ar/corp/negocios/comercio_exterior/fr_comercio_exterior.htm>.

Since early 80’s Telefónica

de España, S.A., and more recently, the rest of the Complainants, have

become one of the largest holdings in Spain and throughout the world. In addition,

the Complainants have collaborated in the promotion of many cultural activities

(see <fundacion.telefonica.es>).

The Complainants base the

Complaint on various trademarks registrations which are quoted in the Complaint.

Some of those trademarks were registered in April 1996, that is, too long before

the Respondent did register the domain name at issue.

The Panellist has checked

that the use of the word UNIFON in the most important search engines of the

Internet shows that the Complainants are mostly appointed in all items.

5. Parties’ Contentions

A. Complainants contend

that:

(a) The domain name

at issue is identical and therefore confusingly similar to the various trademarks

including the word UNIFON that have been registered in favor of the Complainants.

(b) The Respondent does

not have any right or legitimate interest in the domain name at issue due to

the following:

(i) The Respondent registered

the domain name in 1998.

(ii) The Site of the

domain has had no activity since it was firstly registered by the Respondent.

(c) The domain name

<unifon.com> was registered and is being

used in bad faith, due to the fact that the Respondent has adopted a passive

attitude, since it has not included any content whatsoever in the Site corresponding

to the domain name at issue, and he is obstructing the legitimate use of the

domain name by the Complainants.

B. Respondent did not

answer to the Complaint

Duly notified, the Respondent

did not answer the Complaint.

6. Discussion and Findings

The Policy sets forth in

Paragraph 4(a) the cumulative elements that the Complainant must prove in order

to succeed in an administrative proceeding for abusive domain name registration

and use.

4.a. (i) Identity or Confusing

Similarity

It is necessary to check

whether there is a substantial identity between the words of the Complainants’

trademarks and the Respondent’s domain name. In this case, having compared the

words of each of the distinctive signs at issue, the conclusion must be that

the coincidence between the trademarks and the disputed domain name is absolute.

As a result, it is beyond

question that the trademark <UNIFON> is identical to the domain name <unifon.com>.

In conclusion, the requirement

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

4.a.(ii) Absence of Respondent

Rights or Legitimate Interest in the Domain Name <unifon.com>

The domain name at issue

does not coincide with whole or part of the Respondent’s name, trademark, trade

name, corporate name or any other legitimate interest of its own. The Respondent

has not proved at all the existence of any right or legitimate interest of its

own in the referenced domain name.

The Complainants have proved

to be some legitimate right on various trademarks, which are identical to the

domain name <unifon.com>. The commercial activity protected through those

distinctive signs has been initiated quite long before the Respondent registered

that domain, and the legitimate activity of the Complainants has been continued

to date.

The Panel must, therefore,

conclude that the Respondent does not have any legitimate interest in the disputed

domain name, nor has proved so.

Therefore, the requirement

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

4.a.(iii) Respondent’s

Registration and Use of the Domain Name in Bad Faith

Due to the fact of the

trademarks registrations, the Complainants’ well-known name, and the extension

of their activity in the Spanish and South American market, I consider that

the Respondent should have been aware of the unfair use of the trademarks including

the word UNIFON, either in the moment of purchasing the domain name, or afterwards

when using them in a passive way.

On the other hand, the

lack of use by the Respondent of the disputed domain name <unifon.com>

has been considered by previous decisions of the Center as evidence of bad faith.

According to Decisions WIPO Case No. D2000-0018, Banco Español de Crédito,

S.A. v. Miguel Duarte Perry Vidal Taveira, WIPO Case No. D2000-0020,

Compagnie de Saint Gobain v. Com-Union Corp, WIPO Case No. D2000-0239, J. García

Carrión, S.A. v. Mª José Catalán Frías and WIPO

Case No. D2000-0277, Deutsche Bank AG v. Diego-Arturo Bruckner, inter alia,

the use in bad faith of the Domain Name may be declared even if it has not been

used at all, nor there are serious purposes thereto.

Accordingly, the Panelist

considers that the Respondent is using the domain name <unifon.com> in

bad faith by just using it in a passive way, that is, by not including any contents

whatsoever within the Site corresponding to the domain name at issue, since

this sort of use eventually prevents the Complainants from making a legitimate

use of it on the grounds of previous trademark or any other legitimate rights.

Therefore, the domain name

<unifon.com> was registered and is being used in bad faith.

7. Decision

The Complainants have proved

that the domain name is identical to trademarks rights of the Complainants,

that the Respondent has no rights or legitimate interest in the domain name

at issue, and that the Respondent did register and use the domain name in bad

faith. Therefore, according to Paragraphs 4(i) of the Policy and 15 of the Rules,

the Panel requires the transfer of the domain name <unifon.com> to the

Complainants as requested.

Jose Carlos

Erdozain

Sole Panelist

Dated: June

26, 2001