Bodegas Vega Sicilia v. Luis Gomez Conde

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bodegas Vega Sicilia, S.A. v. Scott Jebbars

Case No. D2002-0169

1. The Parties

The Complainant is Bodegas Vega Sicilia, S.A., a Spanish Company with domicile

at Finca Vega Sicilia, Carretera Nacional 122, Km. 323, Valbuena de Duero,

Spain. Its representatives in the administrative proceedings are Mr. Albert

Agustinoy and Mr. Alejandro Negro, of Cuatrecasas Abogados,

Barcelona, Spain.

The Respondent is Mr. Scott Jebbars, which is the identity of

the registrant of the Domain Name. The e-mail address indicated among its

contact data is <viaje00@usa.com>.

2. The Domain Name and Registrar

The Domain Name at issue is < vegasicilia.info>

.

It is registered with ENOM, INC., 16771 NE 80th Street,

Suite #100, Redmond, Washington 98052, United States of America.

(the "Registrar")

3. Procedural History

On February 19, 2002, by e-mail, and on February 20, 2002, in

hard copy, the WIPO Center received a Complaint in accordance with the Uniform

Domain Name Dispute Resolution Policy, 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 Names Dispute Resolution

Policy (the "Supplemental Rules").

Upon the Center’s request dated March 1, 2002, the Registrar

confirmed that the Domain Name under dispute was registered with it. It

also informed that the domain name was in "lock" status. However,

neither the identity of the registrant nor the technical, administrative

and billing contacts were the same as the ones indicated in the Complaint.

Consequently, the Center notified the Complaint Deficiency on March 14, 2002.

A Complaint Modification and Supplemental Filing regarding several circumstances

related to the case that had occurred after the initial writ was filed were

submitted on March 18 and 19, 2002.

On March 22, 2002, the Center notified the parties of both the Complaint

and the Commencement of the Administrative Proceedings.

As no response was submitted by the Respondent, on April 18, 2002,

the Center sent to the Parties the Notification of Respondent’s Default.

On May 6, 2002, the Center sent a Notification of Appointment of Administrative

Panel to the Parties, Mr. Montiano Monteagudo was appointed as Sole Panelist.

The Sole Panelist finds that the Panel was properly constituted.

The language of the proceedings is English.

4. Factual Background

The following facts, extracted from the Complainant’s submissions and undisputed

due to the Respondent’s default, are established:

Bodegas Vega Sicilia, S.A. is a highly reputable Spanish wine producer,

with a long tradition in the production of extremely prestigious wines that

covers almost one and a half centuries. The Vega Sicilia property was established

in 1864 by Mr. Eloy Lecanda. At present, the Vega Sicilia’s 250 acre vineyard

is run by the Complainant, that continues with the traditional blend of

60 % of Tempranillo grape, 25 % of Cabernet Sauvignon

grape, 10 % of Merlot grape, 4 % of Marlet grape and 1 % Albillo

grape. The average age of the vines is more than 40 years, with some being

80 years old, and the yield is quite small. The property is situated in

the Western part of the Ribera del Duero region, in North-Central

Spain, in Castilla-León. This is considered as one of the fastest

growing wine regions in Spain. The Ribera del Duero wine producers

grow highly concentrated grapes. The wine obtained is aged for ten years

in cask and sometimes longer in bottle before releasing well-regarded wines

that can still benefit from cellar aging.

The winemaking procedure used by Bodegas Vega Sicilia, S.A. remains completely

traditional and the steps taken to insure quality are very strict. Upon

arrival at the bodega, a rigorous selection of grapes is made, and only

free run juice is used. No wine from the press is incorporated. After a

few months in American oak vats, the wines are transferred to a combination

of small American and French oak barrels and aged longer than any of the

world’s great wines.

The winery produces mainly two wines: Unico and Valbuena. Unico

is the Complainant’s most well-regarded wine, being generally released only

ten years after harvest, spending much of that time maturing in oak casks.

The production of Unico is currently limited to 8,000 cases. At present,

the 1986 vintage is the last one issued for sale, priced at about $ 150

per bottle. Valbuena is a red wine younger than Unico, that

is also extremely well-regarded by the specialists. Its production is also

limited, being around 12,000 cases issued per vintage.

Vega Sicilia’s wines were awarded the Bronze Medal at the International

Industrial Exhibition of 1892, the Gold Medal and the Great Diploma of Honour

at the Christmas Exhibition held in Madrid in 1927, the Gold Medal and the

Great Diploma at the Barcelona International Exhibition held in 1927, the

Gold Medal and the Great Diploma at the Barcelona International Exhibition

held in 1929, the 1996 Red Wine World Championship awarded by the Beverage

Testing Institute for the 1983 Vega Sicilia Unico.

Vega Sicilia’s wines have also been acclaimed by the wine specialists as

one of the best red wines in the world. "Time" included Vega Sicilia

Unico in the list of the 12 best wines of the world. The "Guía

del Gourmet" called Vega Sicilia Unico as a "unique pearl".

In the Wines Pocket Guide by Hugh Johnson, Vega Sicilia Unico was awarded

the maximal classification (4 stars).

The "Vega Sicilia" wines have become well known throughout the

world.

80% of the Complainant’s production is marketed in Spain, the remaining

20% being exported. Nevertheless, wine-testing sessions of Vega Sicilia’s

products are held in many countries, such as United States of America, United

Kingdom, Hong Kong SAR of China, Japan or Puerto Rico.

Bodegas Vega Sicilia, S.A. has neither carried out advertising campaigns

nor transferred its trademarks to any third party, as it deems keeping control

of its trademarks a key element for its corporate development.

Vega Sicilia, S.A. is the owner of at least 41 registrations of the Vega

Sicilia trademark with the Spanish Oficina Española de Patentes y

Marcas (OEPM).

Vega Sicilia, S.A. is the owner of Vega Sicilia marks in Thailand, Denmark,

Gibraltar, Andorra, Bulgaria, Nicaragua, Peru, Dominican Republic, Panama,

Guatemala, Greece, Finland, Ireland, Norway, New Zealand, Paraguay, Sweden,

Uruguay, Switzerland, Canada, Mexico, Chile, Australia, China, Taiwan, Province

of China, United Kingdom, United States of America, Japan and Germany. Bodegas

Vega Sicilia, S.A. has applied for the registration of its VEGA SICILIA

trademark in India, France, Argentina, Colombia and Brazil. The Complainant

has also registered before the World Intellectual Property Organisation

the international trademarks "VEGA SICILIA" registered on December

22, 1982, covering Algeria, Germany, Austria, Benelux, Egypt, France, Hungary,

Italy, Liechtenstein, Morocco, Portugal, Rumania, San Marino, Switzerland,

Czech Republic, Tunisia, Soviet Union and Yugoslavia with registration number

473474. "BODEGAS Y VIÑEDOS VEGA SICILIA" was registered

on August 2, 1991, as a Class 33 trademark, covering Algeria,

Germany, Austria, Benelux, Bulgaria, China, Cuba, France, Hungary, Italy,

Liechtenstein, Morocco, Monaco, Portugal, Rumania, San Marino, Switzerland,

Czech Republic, Soviet Union and Yugoslavia, with registration number 574348.

"VEGA SICILIA" registered on January 29, 1992, as a

Class 33 trademark, covering China, Cuba and the Russian Federation, with

registration number 583120.

Bodegas Vega Sicilia, S.A. currently holds the following domain names:

<vegasicilia.com>, <vegasicilia.net>, <vegasicilia.org>,

<vegasicilia.biz>, <vega-sicilia.com>, <vega-sicilia.net>,

<vega-sicilia.org>, <vega-sicilia.info>, <vega-sicilia.biz>.

The Respondent registered <vegasicilia.info> with ENOM, INC.

Although as of the filing of the initial writ of Complaint, the registrant

of the Domain Name at issue was Mr. Luis Gómez Conde, the current

registrant of that Domain Name is Mr. Scott Jebbars and, thus, the latter

is the Respondent in this proceeding.

The Domain Name currently redirects Internet users to the web page http://www.afternic.com,

where it is offered for sale. The identity of the seller, which corresponds

to the one existing when the Domain Name’s Registrant was Mr. Luis Gómez

Conde, is abcdominio.com. Under this identity there are other Domain Names

offered for sale that are correspond to registered trademarks in Spain.

On February 25, 2002, after the Complaint was filed, the Complainant received

two e-mails from the address that appears among the Respondent’s registration

data, that is: "<mailto:viaje00@usa.com>". By means of those

e-mails, the Complainant was offered the opportunity to acquire the Domain

Name upon payment of $500. Among other statements, it is most relevant to

highlight that the Respondent made the offer when he was perfectly aware

of the fact that the Complainant was already seeking its transfer. The second

e-mail, sent to the Complainant’s Internet services provider with copy to

the Complainant itself, contains a sentence that reads: "Maybe your

client has been trapped by some lawyers that are going to make him spend

thousands of dollars when he may acquire it with absolute security by $500."

5. Parties’ Contentions

5.1. Complainant

The Complainant contends:

The Domain Name is identical to its trademarks. In view of many previous

decisions of the Center, the only difference between the Domain Name and

the trademarks is the space between "vega" and "sicilia".

As a Domain Name, for technical reasons, could never be comprised of two

words separated by an empty space, this difference is irrelevant.

The Respondent has no legitimate interest in the Domain Name. All the references

that appear on the Internet to Vega Sicilia are references to the Complainant’s

products. None of them refers to the Respondent. Moreover, the Respondent

has not signed any contract or entered into any kind of agreement with the

Complainant as to the use of the latter’s trademarks. Therefore, he does

not have the right to use the Domain Name.

It is undoubted that the registration of the Domain Name was made with

the purpose of reselling it either to the Complainant or to any third party,

since the Respondent posted the Domain Name on a web page focused on the

sale of domain names. In addition, the fact that the Respondent has registered

other domain names identical to well known Spanish and International trademarks

shows that the registration was made with an intention entirely contrary

to good faith, as it corresponded to an evident "cybersquatting"

strategy. Moreover, the Respondent has committed a breach of its contractual

obligation with the Registrar, as it does not provide it with all the contact,

billing, technical and administrative information required.

It is also clear, from previous decisions of the Center, that the offer of

the Domain Name in public auction constitutes a use in bad faith. The Complainant

refers to decisions WIPO Case Nos. D2000-0044,

D2000-0393, D2000-0353

as previous cases in which the sale of the Domain Name in public auction had

been considered an evident use in bad faith.

Insofar as the Respondent has maintained a passive attitude towards the

Domain Name, the Complainant refers to previous decisions of the Center

that state that the lack of use, when a registration has been made in bad

faith, is also evidence of use in bad faith.

As a consequence of all the foregoing, the Complainant requests the transfer

of the Domain Name.

5.2. Respondent

Respondent has not submitted a response and it is, therefore, in default.

Nor has it made any other submission whatsoever after the Notification of

the Respondent’s Default. The only activity the Respondent has engaged in

related with the Domain Name is the sending of the two e-mails we have already

referred to in the Factual Background.

Pursuant to paragraphs 14 (a) and (b) of the Rules, in the event a default

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

and it "shall draw such inferences therefrom as it considers appropriate".

6. Discussion and Findings

6.1 Applicable Rules

In accordance with paragraph 15 (a) of the Rules, the Panel shall decide

the complaint on the basis of the statements and documents submitted and

in accordance with the Policy, the Rules and any rules and principles of

law it deems applicable.

6.2 Requirements to submit an administrative proceeding pursuant to

paragraph 4.a of the Policy

In order for a claim to be submitted to a mandatory administrative proceeding,

the Complainant must prove that:

(i) the Domain Name is identical or confusingly similar to a trademark

or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect

of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad

faith.

6.2.1 4.a.(i) Identity or Confusing Similarity

The Panel finds the Domain Name under dispute to be identical to the trademarks

owned by the Complainant. As indicated by the Complainant and in accordance

with many decisions of the Center, the gTLD must not be borne in mind in

order to make that comparison.

Therefore, the only difference between the Domain Name and the trademarks

of the Complainant is the existence of a void between "Vega" and

"Sicilia" in the trademark. Such spaces do not exist in the Domain

Name due to technical reasons.

Therefore, as the only differences that exist between the Domain Name and

the trademarks cannot be borne in mind, the only possible conclusion is

that the Domain Name and the Complainant’s trademarks are identical.

The Complainant has, thus, succeeded in providing evidence of the identity

between its trademarks and the Domain Name under dispute.

6.2.2 4.a.(ii) Absence of Respondent Rights or Legitimate Interest

in the Domain Name <vegasicilia.info>

The Respondent’s default, along with the evidence submitted by the Complainant

as to the references to "Vega Sicilia" on the Internet, lead the

Panel to conclude that the Respondent has no rights or legitimate interests

in the Domain Name.

It has been clearly established that the Complainant’s trademarks are well

known and reputed not only in Spain but also in many countries throughout

the world. The Respondent’s default prevents the Panel from hearing any

possible arguments as to why the Respondent chose to register a Domain Name

identical to such a well-known trademark and leads the Panel to the conclusion

that these arguments do not exist.

The Complainant has not entered into any kind of contract or agreement

with the Respondent. Therefore, the Respondent holds no possible rights

to use the trademark "Vega Sicilia".

The Panel concludes that the Complainant has also succeeded in providing

evidence of the Respondent’s lack of rights or legitimate interest in the

Domain Name. The requirement set forth in paragraph 4.a (ii) of the Policy

is, thus, met.

6.2.3 4.a.(iii) Respondent’s Registration and Use of the Domain Name

in Bad Faith

Paragraph 4.b of the Policy sets forth that the following circumstances,

in particular but without limitation, shall, if found, be evidence of registration

and use in bad faith:

(i) circumstances indicating that the respondent has registered or

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 the respondent’s

documented out-of-pocket costs directly related to the domain name;

At the time when the initial writ of Complaint was filed, there were many

circumstances indicating that the Domain Name had been registered and was

being used in bad faith pursuant to paragraph 4.b.(i), quoted above.

After the Supplemental filing, those circumstances indicating the registration

and use in bad faith became clear and obvious evidence of the "cybersquatting"

behavior of the Respondent. The fact that, after the filing of the Complaint,

the Respondent not only decided not to submit a response but limited it’s

behavior to offering the Domain Name for sale upon payment of $500 is nothing

but the most clear evidence of the intention of the Respondent when it registered

the Domain Name. That is to say, resell it by means of a public auction

or simply wait for the owner of the trademark to which the Domain Name was

identical to seek the transfer and at that time make him an offer.

The existence of the two e-mails the Complainant received after the Complaint

was filed is enough to conclude the registration and use in bad faith of

the Domain Name. The only activity of the Respondent as regards the Complainant’s

claim for the transfer has been to turn into facts what could have been

nothing but inferences.

The Panel concludes that the Complainant has also succeeded in providing

evidence of the registration and use in bad faith of the Domain Name by

the Respondent.

7. Decision

The Complainant has proved that the Domain Name is identical to its trademarks,

that the Respondent has no rights or legitimate interest in the Domain Name

at issue and that the Respondent has registered and used the Domain Name

in Bad Faith. Therefore, pursuant to Paragraph 4.a of the Policy and 15

of the Rules, the Panel requires the registration of the Domain Name <vegasicilia.info>

to be transferred to Bodegas Vega Sicilia, S.A., as requested.

Montiano Monteagudo

Sole Panelist

Dated: May 20, 2002