Eroski, S. COOP v. GETDOMAINS ISHOWFLAT LIMITED

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL

DECISION

Eroski, S. Coop. v. Getdomains Ishowflat Limited

Case No. D2003-0209

1. The Parties

The Complainant is Eroski,

S. Coop., Vizcaya - Spain (the "Complainant") represented by Mr. Iñaki Bolinaga.

The Respondent is Getdomains

Ishowflat Limited, of Sheung Wan, Taiwan, Province of China (the "Respondent").

2. The Domain Name and

Registrar

The domain name at issue

is <vistobueno.com>, (the "domain name") registered with Tucows

Inc., a corporation with head office at 96 Mowat Avenue, Toronto, Ontario M6K

3M1, Canada (the "Registrar").

3. Procedural History

On March 17, 2003,

a Complaint without indicating a date was submitted by e-mail to the WIPO Arbitration

and Mediation Center (the "Center"). The submission was made 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 March 19, 2003, The Center acknowledged receipt of the Complaint,

and issued a notice of allowance to prosecution, provided the satisfaction of

formal requirements contained in the Policy and Rules, and assigned corresponding

case Number: D2003-0209 and Case Manager.

On March 19, 2003,

The Center notified the registrar on record, namebay.com, that the Complaint

was filed by Complainant, against Antonio Acuña, and that it would

concern the domain name. A request was made to namebay.com, in conformance with

the Rules and Policy, to indicate receipt of the Complaint, and to confirm that

Antonio Acuña registered the domain name with namebay.com, among

others. On March 25, 2003, and after three reminders, namebay.com

responded by informing that the domain name registration was transferred to

Tucows (The "Registrar").

On March 25, 2003,

The Center notified to the Registrar about the filing of the Complaint against

Mr. Antonio Acuña, in the same terms as it did to namebay.com.

A request for information was made as well as for the locking up of the domain

name.

On March 25, 2003,

Registrar responded to the Center by confirming, among others, that the domain

name was indeed registered with Registrar and that the current registrant thereof

was Getdomains Ishowflat Limited as a result of a transfer. From the communication

it was obtained that the transfer was made on the same date. The pertinent information

to identify the registrant, now Respondent was submitted and the domain name

was locked as per order of the Center.

On March 26, 2003,

The Center informed Complainant about the current names of the registrant, now

Respondent, and of Registrar. The Center made a Complaint Deficiency Notification

to Complainant, requesting the modification of the Complaint by March 31, 2003.

On March 31, 2003,

Complainant filed the Complaint with the modification that the Center had requested.

On April 26, 2003, the Center sent in Spanish, a Notification of

Complaint and Commencement of Administrative Proceeding, in case No.

D2003-0209, to the Respondent. The Center established May 15 as the deadline

for the submission of response to the WIPO Center and the Complainant.

On May 5, 2003,

Respondent sent an e-mail to the Center asking for a copy of the Complaint in

the English language and on the same date, the Center informed to the Complainant

that, as per request of Respondent, and in accordance with the Policy and Rules,

the Complaint had to be translated from Spanish into English, for submission

on May 23, 2003. Complainant made a timely filing of the translated

Complaint.

On June 11, 2003,

the Center sent a new Notification of Complaint and Commencement of Proceeding

to the Respondent, this time in English. The Center marked July 1, 2003,

as the deadline for the submission of a response to the WIPO Center and the

Complainant.

The Notification of the

Complaint included following paragraph:

"6. Default.

If your Response is not sent by the above date or we have not received any required

payment from you by that 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."

On July 1, 2003,

the Center sent a Notification of Respondent Default to the Parties by e-mail.

After having received Luis C. Schmidt’s

Statement of Acceptance and Declaration of Impartiality and Independence, the

Center appointed him as a Sole Panelist. The decision date was scheduled for

July 28, 2003. Thus, the Administrative Panel finds that it has been

properly constituted.

The Panel sharing the assessment

of the Center 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 duly notified

Complaint to the Respondent, pursuant to Rules, paragraph 2(a), and that

the Notification of Respondent Default was also properly notified.

There were no extensions

granted or orders issued.

The registration agreement

for the domain name at issue has been written and executed in English by Respondent-Registrant

Getdomains Ishowflat Limited and the Registrar. The Complainant has submitted

its Complaint without any observation. By undertaking that there are no special

circumstances to determine otherwise, as provided in Rule paragraph 11,

the language of this proceeding is English.

4. Factual Background

After Complainant’s assertions, supported by the documents enclosed as annex,

all of them undisputed by Respondent – as having defaulted to the Complaint

– and after proper verification conducted at the database of the Spanish Trademark

Office by the Panel itself, based on the discretional powers conferred upon

this latter, in accordance with the article 10a) of the Regulation, applicable

to the present matter, supported by precedents such as D2000-0076,

the Panel finds that the Complainant owns the following trademarks registered

in Spain:

Number

Date of Grant

Name

Class

2.141.971

VISTO

BUENO

22.

2.141.976

VISTO

BUENO

23.

2.141.977

VISTO

BUENO

24.

2.141.978

VISTO

BUENO

25.

2.141.979

VISTO

BUENO

26.

2.141.980

VISTO

BUENO

27.

2.164.895

VISTO

BUENO (word and device)

22.

2.164.896

VISTO

BUENO (word and device)

23.

2.164.897

VISTO

BUENO (word and device)

24.

2.164.898

VISTO

BUENO (word and device)

25

2.164.899

VISTO

BUENO (word and device)

26

2.164.900

VISTO

BUENO (word and device)

27

2.416.465

VISTO

BUENO (word and device)

1

2.416.466

VISTO

BUENO (word and device)

2

2.416.467

VISTO

BUENO (word and device)

3

2.416.468

VISTO

BUENO (word and device)

4

2.416.469

VISTO

BUENO (word and device)

5

2.416.470

VISTO

BUENO (word and device)

6

2.416.471

VISTO

BUENO (word and device)

7

2.416.472

VISTO

BUENO (word and device)

8

2.416.473

VISTO

BUENO (word and device)

9

2.416.474

VISTO

BUENO (word and device)

10

2.416.475

VISTO

BUENO (word and device)

11

2.416.476

VISTO

BUENO (word and device)

12

2.416.477

VISTO

BUENO (word and device)

13

2.416.478

VISTO

BUENO (word and device)

14

2.416.479

VISTO

BUENO (word and device)

15

2.416.480

VISTO

BUENO (word and device)

16

2.416.481

VISTO

BUENO (word and device)

17

2.416.482

VISTO

BUENO (word and device)

18

2.416.483

VISTO

BUENO (word and device)

19

2.416.484

VISTO

BUENO (word and device)

20

2.416.485

VISTO

BUENO (word and device)

21

2.416.486

VISTO

BUENO (word and device)

28

2.416.487

VISTO

BUENO (word and device)

29

2.416.488

VISTO

BUENO (word and device)

30

2.416.489

VISTO

BUENO (word and device)

31

2.416.490

VISTO

BUENO (word and device)

32

2.416.491

VISTO

BUENO (word and device)

33

2.416.492

VISTO

BUENO (word and device)

34

2.416.493

VISTO

BUENO (word and device)

35

2.416.494

VISTO

BUENO (word and device)

36

2.416.495

VISTO

BUENO (word and device)

37

2.416.496

VISTO

BUENO (word and device)

38

2.416.497

VISTO

BUENO (word and device)

39

2.416.498

VISTO

BUENO (word and device)

40

2.416.499

VISTO

BUENO (word and device)

41

2.416.500

VISTO

BUENO (word and device)

42

Complainant, Eroski, S. Coop., is a company doing business

in the field of product distribution and commercialization in Spain, having

hypermarket and super-market facilities all over that country. It was set-up

in the spring of 1969, from the integration of ten corporative entities of Vizcaya

and Guipuzcoa. The Corporation grew and in 1970, the name was changed to

Eroski, S. Coop. as it is presently called.

From consulting websites, as it would be "fundaciongrupoeroski.es"

and "eroski.es," Grupo Eroski (Eroski Group) can be perceived,

as an entity controlling a number of businesses and trademarks. Vistobueno is

among the listed trademarks, as applied in connection with textile and clothing

products that are sold throughout the chain of stores that the company owns.

Mr. Antonio Acuña, registered the domain name

presumably on December 2, 2001, in conformance with the documentation

submitted by the Complainant and searches conducted by the Panel at its discretion,

at the WHOIS database of Network Solutions, Inc.

On November 2002, before the Complaint was filed, someone

anonymous contacted the Complainant seeking the negotiation of the domain name.

No particular amount of money was requested. However, the domain name was offered

to Complainant at a "very competitive price." On a later communication,

Mr. Antonio Acuña asked Complainant to transfer the four domains

that it possessed for vistobueno or the purchase of <vistobueno.com>.

The reason given was that in the view of Mr. Acuña, it was better

of that the five domains be in the name of one single party. Complainant did

not follow any dialog or exchange of correspondence, whether by mail or other

wise.

In accordance with the documentation filed by the Complainant,

which Respondent did not contend as having defaulted, as well as the search

that the Center made, it was found that the domain name was transmitted to the

Respondent at the address given above. The date of transfer appears to be March 25, 2003.

That can be obtained from information that the Registrar sent to the Center,

via mail, on that same date. Previous to that, on March 19, 2003,

the Center had notified the Complaint to the former Registrar, namebay.com who

despite of three reminders, did not respond until March 25, 2003,

informing that the domain name had been transferred to another Registrar and

that it was no longer responsible for its care. Namebay.com did not explain

to the Center the reason why it acknowledged receipt on the date of the transfer,

when the notice from the Center was received before that.

On March 18, 2003, that is, one day after the Complaint

was filed, Mr. Acuña sent a new notice to Complainant suggesting

a deal.

From the information obtained by consulting records and from

further searches, it could be perceived that the original owner of the domain

name has been involved in at least one other UDRP proceeding, having lost <cajamediterraneo.com>

and <cajamediterrano.net> to Caja de Ahorros del Mediterraneo, a Spanish

financial corporation.

Moreover, from inquiries made by using searching tools such

as Yahoo.com, it could be obtained that Getdomains is not listed as a company

in Taiwan, and that the address and telephone numbers that were provided to

Registrar are wrong. In particular, it appears to be no address listed as Shun

Tak Centre in Taiwan, as it rather takes the searcher to Hong Kong. From the

foregoing it can be presumed that Respondent does not exist, and the original

holder of the domain name, Mr. Antonio Acuña, to hide and thus

avoid being sued, very well could have employed it.

There is actually no site that can be accessed under domain

name <vistobueno.com> or there is no indication that it could have been

routed.

After the Complainant’s assertions – not disputed by Respondent

because of the default – and the confirmation sent by the Registrar to the WIPO

Center, it has been demonstrated that the Respondent has registered the domain

name with Tucows, Inc.

5. Parties’ Contentions

5.1 Complainant

The Complainant asserts

that:

• The domain name at issue

is identical to the trademark on which the Complainant has rights; and the Respondent

has no rights or legitimate interests in respect of the domain name; and that

it was registered and is being used in bad faith.

• The Complainant’s trademark

VISTOBUENO, identifies a famous and/or renowned brand of clothing/fashion all

over Spain. In accordance with the statements of Complainant, VISTOBUENO products

are widely advertised nationally. VISTOBUENO is apparently a very famous trademark

in Spain, although Complainant and did not provide persuasive evidence on this

regard. The Complainant has vigorously registered its intellectual property

rights in all trademark classes, with complete success. Indeed, there is no

other individual or corporation than the Complainant holding trademark rights

on VISTOBUENO in Spain, at least in connection with textile products, and certainly

the Respondent holds no rights whatsoever on the mark.

• There is no doubt about

the lack of any legitimate intellectual property right of the Respondent to

those marks, and proof of the Respondent’s bad faith in registering and using

the domain name (paragraph 3(c) of the Policy). Complainant argued that from

consulting the Spanish Trademark Office or the Business Registration Office,

it could not be obtained that nobody, excepting the Complainant itself, holds

rights over the domain name. In addition, it purported that from the unsolicited

offer to sell received from the former holder of the domain name, Respondent

acted in bad faith.

• The original registrant

resides in Spain and is most probably a Spanish citizen. Therefore, he is a

resident within the geographical area where VISTOBUENO products are sold and

publicized in the media. Said products can be obtained indeed, in the province

and place of residence (in Seville, there are located at least four stores selling

the products).

• The former owner transferred

the domain name after the Complaint was filed. This could not be inferred as

a coincidence and can be contended as a fraud.

• That the Complaint had

to be modified as it was originally entertained against Mr. Acuña.

The foregoing was made due to the fraudulent transfer of the domain name to

Respondent made shortly after the filing of the Complaint. Likewise, it was

in bad faith that Mr. Acuña sent a new offer one day after the Complaint

was filed, knowing to this fact, and then changed the information about the

holder.

• The Complainant requests

the Administrative Panel to issue a decision that the contested domain name

must be transferred to the Complainant.

• The Complainant agrees,

with respect to any action that Respondent may bring against decisions of the

Administrative Panel that it would stick to the jurisdiction of the courts in

Spain.

5.2 Respondent

The Respondent has not

submitted a response, and therefore is in default. After the Notification of

Respondent Default, it has not made any submissions whatsoever.

6. Discussion and Findings

6.1 Effects of Respondent

Default

Respondent was required

to give an answer to the Complaint as filed by the Complainant. According with

Rules, paragraph 5(b)(i) "(t) he response shall (...) (r) espond

specifically to the statements and allegations contained in the complaint and

include any and all bases for the Respondent (domain-name holder) to retain

registration and use of the disputed domain name (...)."

Under the Rules, and in

particular paragraph 14(a), the Panel "shall proceed to a decision on the

complaint," and under paragraph 14(b), the Panel "shall draw such

inferences therefrom as it considers appropriate."

In line with the foregoing,

any defaulting response would indicate that the assertions that the Complainant

raised would give sufficient grounds to a default decision in the favor of this

latter. However, under the Policy the defaulting response still needs to be

qualified, because "the complainant must prove that each of these three

elements are present." Policy, paragraph 4(a) in fine.

6.2 Independent Connection

with the Website of Respondent

As concluded in Case D2000-0076, the

Panel considers that under Paragraph 10(a) of the Rules, the Panel has

the power to independently search over the Internet, in order to obtain as much

information as required to render a decision.

The Panel visited the "www.vistobueno.com"

website of the Respondent. The address did not lead to an active website.

6.3 Identity or Confusing

Similarity

The Panel has carefully

considered the allegation that the Complainant has made that the domain name

is identical to the registered trademark VISTOBUENO. On the other hand, the

Panel could not analyze any arguments from Respondent contesting to the foregoing,

due to the fact that it defaulted to give an answer to the Complaint.

The Panel has anyway made

its own comparison of the domain name at issue vis-a-vis the Complainant’s trademarks

VISTOBUENO, and finds that that the second level domain name vistobueno,

is identical letter-by-letter to the Complainant trademarks, and that the addition

of ".com" –a generic top level domain intended for commercial organizations-

makes it rather difficult not to hold it to be confusingly similar to said trademark.

6.4 Rights and Legitimate

Interests in the Domain Name

The Panel has carefully

considered the allegation of the Complainant as to the lack of rights or legitimate

interests of the Respondent in respect of the domain name. In particular, the

Panel has noted the argument that the Respondent lacks of any legitimate trademark

or other intellectual property right in the domain name. The Panel would again

state that Respondent did not bring any defensive statement or arguments against

the Complaint.

In the present default

proceeding there is no contention on record, made by the Respondent or that

anyhow the Panel could rely on, to conclude that it might have trademark or

other intellectual property rights or in general, legitimate interests in the

domain name. Nothing can be evidenced reasonably leading to infer to the foregoing

fact, pursuant to the Policy, paragraph 4(c). This is not to accept that Complainant

did much to prove that Respondent did not have legitimate interests over the

domain name. Complainant has argued "neither the Spanish Bureau of Patents

and Trademarks nor the Business Registration Office shows (sic) any holder other

that (sic) the Complainant holding rights on that name." However, that

assertion was not supported on any evidence whatsoever. Likewise, Complainant

did not realize that Respondent might not had a legitimate interest over the

domain name as a trademark right only, but that an interest could have accrued

somehow, in virtue of any business made from the use of the domain name in itself

or other possibilities.

Notwithstanding the foregoing,

from the inquiries that the Panel made, it was possible to obtain that Respondent

or the previous owner of the domain name, did not do anything that could have

triggered a legitimate interest on the same. As it has been discussed above,

there is nothing on record giving the slightest clue that the domain name is

in use or that there have been preparations for being used, in connection with

a business or any activity in general. This panel gives particular weight to

the fact that Respondent defaulted. It can be inferred that by defaulting Respondent

showed nothing else but an absolute lack of interest on the domain name. And

in the absence of a response, it is truly hard to conclude about the legitimate

interest of the Respondent, on at least some sort of plan or intention to start

using the domain name. The Panel disagrees with the simplistic statement of

Complainant but understands the difficulty that it has faced to show what is

actually in the mind of Respondent. Proving negative facts is not particularly

an easy task. For that reason, Rule 4(a)(ii) binds the Complainant making a

prima facie case. The foregoing represents that the burden of proving

rests initially on this party. However, the burden cannot go as far as to overwhelm.

It is incumbent on Respondent to contribute to the fact-finding and if contrary

to that, it rather incurs in default, there is nothing that the Panel could

do to discuss in its benefit.

Therefore, the Panel finds

that the Respondent has no rights to or legitimate interests on the domain name

at issue.

6.5 Registration and

Use in Bad Faith

6.5.1 Preliminary Remarks

The initial holder of the

domain name, Mr. Antonio Acuña, resides in Spain and is most

probably a Spanish citizen. Spain is also within the geographical area where

trademark VISTOBUENO has been registered and where it has been used. This was

asserted by Complainant and ran undisputed by Respondent. It is most likely

that Mr. Acuña was aware of the products and trademark of the Complainant.

In registering the domain

name, the former holder intended reselling it to Complainant. As a matter of

fact, it can be regarded a clear cut and thus indisputable fact that Mr. Antonio Acuña

himself or someone related to him or acting under instructions or request, sent

an e-mail to Complainant, with a transfer offer referring to the domain name

"at a very competitive price." The refusal of Complainant to enter

into a negotiation, lead Mr. Acuña to respond, suggesting certain

variations to the original offer, in order to either sell the domain name to

Complainant or get the four other vistobueno domain names pertaining to this

latter. From its statement, it can be obtained that Mr. Acuña recognized

to the value of the vistobueno domain name family that he knew, and to the convenience

having them under one single ownership and source. The Panel would consider

that Mr. Acuña could have very well made the second offer for inducing

Complainant to believe that it was acting in good faith when it was not, or

for preparing a defense in a UDRP. What is definitively most surprising are

the sudden reactions of Mr. Acuña to the submission of the Complaint.

He first contacted the Complainant again, one day after the Complaint was filed

and shortly thereafter, he proceed making the transfer of the domain name to

an entity whose data were false, in accordance with information submitted to

the Registrar. Namebay.com the former registrant, may have contributed to all

this movements by having waited to acknowledge receipt to the Center’s notification

and, during that time, accepted or tolerated that the original registrant made

the transfer. It cannot be told from records whether namebay.com contributed

to that actively or passively, but what it did was very suspicious.

Mr. Antonio Acuña

knew that Complainant was the holder of the four-vistobueno domain names. He

contacted Complainant who was the trademark rights holder of the same name.

It would have been difficult to believe that Mr. Acuña could have

come to the Complainant by coincidence or by chance. If he made the approach

and later discussed about the four domains, he necessarily would have had investigated

Complainant. There can be no doubt that Mr. Acuña acted in bad faith

when registering the domain name.

Furthermore, Mr. Antonio Acuña

has lost at least one domain name registration, <cajamediterraneo.com>,

under very similar circumstances as the present one. In that occasion, Mr. Acuña

sent a communication to the trademark owner under identical terms as those of

the present matter. The Panel deciding over that controversy considered the

offer of Mr. Acuña as a "speculative intention" (intención

especulativa), and the registration made in bad faith as a result.

Notwithstanding the above,

Mr. Antonio Acuña transferred to Respondent any interest that

he could have held on the domain name. As a result of that he cannot be called

or referenced as a Respondent to this proceeding. The facts that the Complainant

narrates illustrate about the multiple wrongs that Mr. Acuña perpetrated

by registering and using the domain name. The Panel shares the views of Complainant

as to the allegations raised against the original registrant –although Complainant

is wrong to call or refer Mr. Acuña as the Respondent- and is even

annoyed by the possibility that namebay.com could have co-participated in the

assignment process or that at least was so permissive. If namebay.com would

have given prompt response to the Center’s notification, the Domain name would

have been put on hold before the time that Mr. Acuña made the transfer.

The Panel is troubled that

Mr. Antonio Acuña cannot attend the current proceeding as a

defendant or in any other capacity and that instead, all what he did can only

be referential to the present analysis and discussion. The Panel will not make

a particular pronouncement on that regard, but will anyway state that the original

registrant could have likely attempted against section 8(a) of the Policy, by

having transferred the domain name when there was a pending administrative proceeding.

Article 3(a) of the Rules could be interpreted as to support that the proceeding

starts or "initiates" when the complaint has been filed. There is

however, a specific provision of the Rules indicating that the proceeding shall

initiate until the Center has notified the Respondent, and that appears to dictate

the norm. The former holder was clever enough to escape from being called to

the proceeding taking advantage of loopholes and thus, saving the domain name

by putting it under the name of a "good faith" assignee. As a result

of that, the course of the proceeding has been shifted, requiring that the analysis

of factors of paragraph 4 of the policy, is made as applied to Respondent.

Paragraph 4(b) of

the Policy refers to certain factors which, if found to be present, shall constitute

evidence of registration and use of a domain name in bad faith. The category

is not exhaustive, but include:

"(i) circumstances

indicating that you (the Respondent) 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, or valuable consideration in excess of your documented out-of-pocket costs

directly related to the domain name; or

"(ii) you have registered

the domain name in order to prevent the owner of the trademark or service mark

from reflecting the mark in a corresponding domain name, provided that you have

engaged in a pattern of such conduct; or

"(iii) you have registered

the domain name primarily for the purpose of disrupting the business of a competitor;

"(iv) by using the

domain name, you have intentionally attempted to attack, for commercial gain,

Internet users to your website 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 website or location or of a product or service on your

website or location."

From paragraph 4(a)(iii)

of the Policy, it can be noted that the bad name factor has to be present in

both the registration and use of a domain name. From the provision quoted above,

that is, Rule 4(b), it can be obtained that paragraphs or sections (i)

to (iii) relate to the question of registration of a domain name in bad faith,

while (iv) specifies the use after acquisition through registration has been

made. The Panel will proceed the discussion of the registration and use factors,

based upon the methodology set by Rule 4(b), but at the same time, bringing

whatever additional analysis considered in precedents or other forms that are

accepted in UDRP.

6.5.2 Registration in

Bad Faith

In the present proceeding, the Respondent, Getdomains Ishowflat Limited, did

not itself register the domain name and is rather a transferee. That is the

reason why the doctrine of "extension" can be invoked here. That argument

is supported on paragraph 4(b)(i) of the Rules and of various precedents,

as it would be cases number D2000-0861,

D2000-0079 and D2000-1406.

For "extension" of a registration it is understood that the corresponding

term "extends beyond the original act of registration and covers subsequent

acquisitions of the domain name." Dixons Group Plc v. Mr. Abu Abdullaah,

D2000-1406. The bad faith of Respondent

consists on a number of factors, triggering from what the original registrant

made to put the domain name save from possible attacks. Under a scenario as

afore-mentioned, the former registrant could have certainly created or used

Respondent to complete the circle. From the findings made and the information

contained in the records of the case, this Panel believes that it is possible

inferring the existence of a relation between Respondent and its predecessor

in title Mr. Acuña.

A further element of bad faith would derive from the false information that

Registrant furnished to the Registrar. As mentioned above, the search that the

Panel made unveiled that irregularity, which is in breach of paragraph 2(a)

of the Policy, relating to the veracity of the information provided in the registration

agreement, and is also embraced by WIPO cases as D2001-0001

and D2001-1105. The cited cases determine

that "the registration of a domain name under a false identity is an element

proving that the domain name was registered or maintained in bad faith within

the meaning of section 4(a)(iii) of the Policy." In addition to the

foregoing, someone intervening in the proceeding to ask for the translation

of the Complaint and then not showing up to respond, is definitively not acting

in good faith.

The circumstances above

described satisfy the Panel to conclude that, for the purposes of Paragraph 4(a)(iii)

of the Policy, the Domain name was registered in bad faith.

6.5.3 Use in Bad Faith

Concerning the use in bad faith, the Panel finds that no access can be made

to any website, when selecting <vistobueno.com>. The foregoing drives

to the conclusion that the domain name is not in use. However, the Panel notes

that "being used in bad faith is not limited to positive action;

inaction is within the concept" (WIPO

Case No.D2000-0003). Instead, in view of the Panel, Registrant has made

a passive holding of the domain name. In accordance with that theory, use of

a domain name in bad faith can be found when there are circumstances leading

to passive holding; among those circumstances amounting to the use in bad faith,

the Panel notes "when it appears that there is no way in which such name

could ever be used legitimately in relation to a business or offering of goods

or services and the identity of Registrant remains unknown" (Kyobo Life

Insurance Co., Ltd. v. Max, D2003-0008) or

when the Respondent has provided false contact details to the Registrar. In

addition, being consistent with precedents like D2000-0869,

D2000-0615 and D2003-0008,

the Panel would extend the scope of paragraphs 4(b)(i)-(iii), to the use

in bad faith of the domain name when the use is made "with one of the purposes

outlined in those paragraphs." The panel feels comfortable in concluding

that the two angles that were described apply to the particular matter.

As to the question whether

VISTOBUENO is a famous or well-known mark in Spain, the Panel cannot draw such

conclusion from the information submitted with the Complaint. The trademark

at issue is VISTOBUENO and not EROSKI. Perhaps, there would be no doubt that

EROSKI can be regarded as a well-known trademark, but Complainant did not clearly

show the same for VISTOBUENO. Accordingly, the Panel believes that VISTOBUENO

cannot benefit from the rights contained in the international treaties that

the Complainant has invoked and most particularly, from the WIPO "Joint

Recommendation Concerning Rules on the Protection of Well Known Trademarks."

The foregoing means that,

in this particular case, the bad faith issue would not be resolved on the basis

of what the WIPO Recommendations have established, that is, that registration

or use of the domain name was made in bad faith just by the fact that it reproduces

or imitates a well known mark. However, this is not to say that bad faith cannot

be found in a case in which the mark has not been regarded to be well-known.

In the instant matter, from what it has been discussed above at length, it is

possible to conclude that the domain name was registered and used in bad faith,

in full compliance with paragraph 4(a)(iii) of the Policy.

7. Decision

The Panel has found that

the domain name <vistobueno.com> is identical or confusingly similar

to the trademarks of the Complainant, and that the Respondent has no rights

to or legitimate interests in said domain name. The Panel has further found

that the domain name has been registered in bad faith, and that it has been

and is being used in bad faith.

Therefore, pursuant to

Paragraphs 4(a)(i), (ii) and (iii) of the Policy and 15 of the Rules, the Administrative

Panel decides to request that the domain name <vistobueno.com>

be transferred to the Complainant Eroski, S. Coop.

Luis C. Schmidt

Sole Panelist

Dated: July 28, 2003