WIPO Domain Name Decisions D2000-1220

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WIPO Domain Name Decisions D2000-1220 Powered By Docstoc
					                  WIPO Arbitration and Mediation Center

                         ADMINISTRATIVE PANEL DECISION

                       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 However the Complainant has also
       named Asturnet, S.L. as a Respondent. Asturnet, S.L. was the registrant of
       “” 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 “” and “”, both
       registered with Network Solutions, Inc., of Herndon, Virginia, USA:

                                            Page 1
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,
     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

                 “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.

                                            Page 2
     There were no other submissions of the Parties, nor were extensions granted or orders

     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,

                                            Page 3
    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.

                               Page 4
          ●     “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 “”. On
     January 9, 1999, grupo picking pack registered “”. On
     January 10, 1999, Complainant registered the domain name “”.
     On February11, 1999, Grupo Picking Pack registered “”. On
     September 11, 2000, Complainant registered “” and has an active web
     site thereunder.

     According with the WHOIS database search by this Panel, Respondent ASTURNET
     registered “” on November 4, 1998. On the same day Respondent
     Mr. Moran registered “”.

     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 “”.

          ●     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

                                          Page 5
    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 “” on 11
    September 1998, while THE RESPONDENTS registered the TLD Names
    subject of the present claim (“” and
    “” ) 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

●   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.

                              Page 6
●   The domain name “” 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 “”. For all these reasons, THE
    RESPONDENTS registered the first TLD name at issue and are using it in
    bad faith. As to “”, 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

●   The representatives of GRUPO PICKING PACK, S.A., once it was evident
    that “” 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 “” 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 “” on January 21st, 2000 and
    checked the content of said page.

                              Page 7
●   Mr. Quera was really amazed with what he found in that site:
    “” 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 “” 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 “” in
    connection with a bona fide offering of goods or services. THE
    RESPONDENTS simply linked the domain to a site in which
    “” 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
    “” 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 “” 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 “” 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.

                               Page 8
●   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 “” 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
    “” which, as far as we are concerned, is completely

●   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.

                              Page 9
          ●     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 “” 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 “”. 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

     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 “”
     and “” 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:

                                          Page 10
         A.      “”:

         On December 10, 2000, the Panel has independently visited the
         “” web site of the Respondent, which shows a text (in Spanish)
         stating 1:

                        "Picking pack Group - Shareholders´ Forum

                        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

         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

                        "When registering the Domain Name (as well as
                        “” and, 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.

1   Unofficial translation from the Spanish original by this panelist.

                                                        Page 11
           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

In WIPO Case D2000-0266 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
            “”. 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 D 2000-0431 Bandon
Dunes L.P. v., 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 (“” and
“”). 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.

                                     Page 12
B.    “”

On December 10, 2000, the Panel also visited independently the
“” 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...", located at “”. This means
that the web site “”, 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.    “”

The Panel´s independent visit to the “” web site showed that
there are many views expressed in the forum whose authors seem to believe that they

                                      Page 13
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.   “”

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

     a)    The permanence of the present domain name registration, together with the
           registration by related Respondent ASTURNET of the “”
           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

                                     Page 14
                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 “”
                and “” 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.

     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 “”
     is also being used in bad faith.

7.   Decision

     The Panel has found that the domain names “” and “”
     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
     “” and “” be transferred to the Complainant GRUPO

                                 Roberto A. Bianchi
                                     Sole Panelist

                                Dated: December 18, 2000

                                          Page 15

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