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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Laboratorios Recalcine S.A., v. Pablo Aguayo

Case No. D2000-1681

 

1. The Parties

Complainant is Laboratorios Recalcine S.A., a corporation duly organized and existing under the laws of Chile, with its principal place of business located at Av. Vicuña Mackenna No. 1094, Santiago, Chile.

Respondent is Mr. Pablo Aguayo, an individual with addresses at Keneddy 1230, Santiago / Lord Cochrane 402, Santiago, Chile.

 

2. The Domain Name and Registrar

The domain name under dispute is <recalcine.com> (the "Domain Name").

The registrar of the domain name under dispute is Internet Names Worlwide, a division of Melbourne IT Ltd., ("INWW" or the Registrar), with business address in Melbourne, Australia.

 

3. Procedural History

On December 4, 2000 and December 13, 2000, Complainant submitted its Complaint through e-mail and hardcopy, respectively, with the required filing fee for a single-member Panel, to the World Intellectual Property Organization ("WIPO") Arbitration and Mediation Center (the "WIPO Center"), in accordance with the Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, the Rules for Uniform Domain Name Dispute Resolution Policy (the " Rules"), and WIPO’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("WIPO’s Supplemental Rules).

An Acknowledgment of Receipt of Complaint was sent to Complainant with e-mail copy to the Respondent, by the WIPO on December 5, 2000.

On December 22, 2000, WIPO sent via e-mail to Complainant with copy to the Respondent, a "Complaint Deficiency Notification" notifying the following formal deficiencies to the Complaint: (i) The complaint submitted was short by one copy; (ii) the Registrar initially indicated is not the Registrar of the domain name under dispute; and, (iii) the Complaint did not included a submission by the Complainant to the jurisdiction of the courts in at least one of the specified mutual jurisdiction which must be expressly identified. On January 4, 2001 and January 8, 2001, Complainant submitted its Complaint through e-mail and hardcopy, respectively, with copy to the Respondent.

On December 22, 2000, WIPO sent a "Request for Registrar Verification" via email to INWW requesting, a confirmation that INWW had received a copy of the complaint; that the domain name under dispute is registered with INWW; that Respondent is the current registrant of such domain name and full contacts details available under the WHOIS database. On December 27, 2000, WIPO received via e-mail from INWW the "INWW’s Verification Response" confirming the above as well as that the Domain Name is currently registered to Respondent and is in "licensed" status, and that Pablo Aguayo is registered as the administrative contact and Registry Department Active ISP is registered as the technical contact.

On January 4, 2001 and January 8, 2001, Complainant submitted an amendment to its Complaint through e-mail and hardcopy, respectively.

On January 10, 2001, WIPO completed a "Formal Requirements Compliance Checklist". It is worth mentioning that the undersigned Panel has independently determined and agrees with WIPO’s assessment that the Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy (the " Policy"), the Rules, and WIPO’s Supplemental Rules.

On January 10, 2001, WIPO properly sent via e-mail and hardcopy through courier to Respondent and to its administrative contact, a "Notification of Complaint and Commencement of Administrative Proceedings" enclosing copy of Complainant’s complaint and amendments and confirming the formal initiation of this proceedings as of such date, and granting a term for providing a response no latter that

January 29, 2001. Furthermore, hardcopy of such Complaint as confirmed by Complainant was also previously sent by Complainant to Respondent via e-mail on November 30, 2000. A copy has also been communicated to the ICANN and to the Registrar.

On January 10, 2001 Respondent sent an e-mail communication to the WIPO regarding the "Notification of Complaint and Commencement of Administrative Proceedings" that Respondent had received. Such communication barely contested to some of Complainant’s argumentations.

This Panel considers that the complaint was properly notified to the registered domain-name holder through reasonably available means calculated to achieve actual notice to such party, to the administrative contact and to the postmaster@the contested domain name, as provided for in paragraph 2 (a) of the Rules. The hardcopy notification was made in two of Respondent’s address, in the one indicated by Complainant and at the one registered before the Registrar.

On January 30, 2001, WIPO sent via e-mail to Respondent and to its administrative contact with copy to Complainant, a "Notification of Respondent Default" confirming that Respondent has failed to comply with the deadline to submit its response, and therefore that a single panelist shall be appointed as proposed by the Complainant and as may be evidenced from paragraph 14 of Complainant’s complaint. Such notification further indicated that the Administrative Panel may decide in its sole discretion to consider Respondent’s Response (if submitted later) in deciding the case.

On February of 2001, Mr. Martin Michaus Romero received an invitation and signed and sent to the WIPO, a Statement of Acceptance to participate as Single Member Panelist and a Declaration of Impartiality and Independence.

On February 13, 2000, WIPO sent to Complainant and Respondent a "Notification of Appointment of Administrative Panel and Projected Decision Date", appointing Martin Michaus Romero as Sole Panelist and scheduling February 26, 2001, as the date for issuance for the Panel’s decision

In consideration to certain misunderstanding from Respondent as to this proceedings in general and as to his legal representation, a certain Procedural Order Number One was issued by Martin Michaus Romero, as acting Sole Panelist, on February 16, 2001, granting the Respondent an extension for submitting a response on or before

February 23, 2001. No response nor additional filing was submitted by Respondent.

Mr. Martin Michaus Romero later communicated to the WIPO, that due to a certain supervening conflict of interest he was forced to resign to his participation as Single Member Panelist under the case subject matter of this proceeding.

On March 30, 2001, the undersigned signed and sent to the WIPO, a Statement of Acceptance to participate as Single Member Panelist and a Declaration of Impartiality and Independence.

On April 4, 2001, WIPO sent to Complainant and Respondent a "Notification of Appointment of Administrative Panel and Projected Decision Date", appointing Pedro W. Buchanan as Sole Panelist and scheduling April 19, 2001, as the date for issuance for the Panel’s decision, pursuant to paragraphs 6 (h) and 15 (b) of the Rules.

The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information, statements or documents from the parties (taking note of Respondent’s default in responding to the Complaint), nor the need as an exceptional matter, to hold any in-person hearings as necessary for deciding the complaint, as provided for in paragraphs 12 and 13 of the Rules. Therefore, the Panel has decided to proceed under the customary expedited nature contemplated for this type of domain name dispute proceedings.

The language of the proceeding is English, as being the language of the domain registration and Service Agreement, pursuant to paragraph 11 (a) of the Rules.

 

4. Factual Background

The Complainant, was created and developed in Chile in early 1922 and was the first company to successfully achieve the production of sulphonamides and penicillin in 1940. It has developed the most advanced pharmaceutical techniques in the Latin American medical community and has become the most significant privately-owned laboratory in Chile.

The distribution of its products extends throughout all of Latin America and reaching countries as far away as Singapore. Its house mark’s reputation, has been attained after being 38 years on the domestic market and more than 12 years on foreign markets. RECALCINE not only constitutes a registered trademark, but also in addition to its corporate name, is Complainant’s greatest intangible asset.

A Network Solutions’ WHOIS database search indicates that the record of registration of Respondent’s domain name <recalcine.com> which was created on September 9, 2000.

In support of its Complaint, Complainant submitted copies of the following Trademark Registrations:

a) Federal Trademark RECALCINE, registered before Industrial Property Department from the Ministry of Economy, Promotion and Reconstruction of the Republic of Chile, under registration Numbers 491,958 issued on November 25, 1997 (effective as of August 20, 1997) to cover personal and perfume articles as well as chemical-pharmaceutical products in classes 03 and 05, with LABORATORIOS RECALCINE S.A., as the sole and exclusive listed owner;

b) Federal Trademark RECALCINE and design, registered before Industrial Property Department from the Ministry of Economy, Promotion and Reconstruction of the Republic of Chile, under registration Numbers 569,186 issued on July 26, 2000 (effective as of May 31, 2000) to cover all products in classes 03 and 05, with LABORATORIOS RECALCINE S.A., as the sole and exclusive listed owner;

c) Federal Trademark RECALCINE and design, registered before Industrial Property Department from the Ministry of Economy, Promotion and Reconstruction of the Republic of Chile, under registration Numbers 530,644 issued on January 11, 1999 (effective as of December 23, 1998) to cover all products in classes 05 and 16, with LABORATORIOS RECALCINE S.A., as the sole and exclusive listed owner;

(d) Federal Trademark RECALCINE and design, registered before Industrial Property Department from the Ministry of Economy, Promotion and Reconstruction of the Republic of Chile, under registration Numbers 530,645 issued on January 11, 1999 (effective as of December 23, 1998) to cover all products in classes 05 and 16, with LABORATORIOS RECALCINE S.A., as the sole and exclusive listed owner;

Furthermore, Complainant provided evidence of registration of the Trademark RECALCINE as well as designs in the following countries: in Brazil under registration Number 818977132, issued on June 16, 1999, to cover all products in classes 05 and 16, with LABORATORIOS RECALCINE S.A., as the sole and exclusive listed owner; in Guatemala under registration Numbers 55263, 55264, 55265, 55266, issued on October 1998, to cover products in classes 3 and 5, with LABORATORIOS RECALCINE S.A., as the sole and exclusive listed owner; in Nicaragua under registration Number 18961, to cover products in class 5, with LABORATORIOS RECALCINE S.A., as the sole and exclusive listed owner; in Argentina under registration Numbers 1737465 and 1746871, issued on January 4, 2000 and on February 9, 2000, to cover products in classes 5 and 42, with LABORATORIOS RECALCINE S.A., as the sole and exclusive listed owner; in Ecuador under registration Numbers 2839-94, 2938-94, issued on August and December 1994, to cover products in classes 3 and 5, with LABORATORIOS RECALCINE S.A., as the sole and exclusive listed owner; in Costa Rica under registration Number 70141, issued on January 14, 1999, to cover products in class 3, with LABORATORIOS RECALCINE S.A., as the sole and exclusive listed owner; in Honduras under registration Numbers 49560, 49561, 49562 and 49563, issued on June 24, 1998, to cover products in classes 3 and 5, with LABORATORIOS RECALCINE S.A., as the sole and exclusive listed owner; in Uruguay under registration Number 280616, issued on October 20,1997, to cover products in class 5, with LABORATORIOS RECALCINE S.A., as the sole and exclusive listed owner;

 

5. Parties’ Contentions

A. Complainant

The Complainant alleged that the domain name <recalcine.com>, used and registered by Respondent, is identical to the RECALCINE trademark owned by Complainant in Chile and in other countries.

That Mr. Pablo Aguayo registered the generic top level domain name <recalcine.com>, without bearing any relationship whatsoever with the Complainant. That Complainant upon learning of such registration, contacted the Respondent who indicated that such matter was in the hands of its attorneys. That on November 30th, 2000, Respondent’s sent an e-mail to Complainant indicating that a foreign investor was interested in purchasing such domain for the amount of US$15,000; and in the event that Complainant were willing to offer a higher amount, they could do so prior to the November 30, 2000.

That it constitutes a clear act of bad faith the acquisition or registration of the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the owner of the trademark or to a competitor of the Complainant for valuable consideration in excess of the registrant’s out-of-pocket costs directly related to the domain name of the good or service.

That Respondent being a citizen from Chile knows perfectly well the reputation of the trademark in such country, which situation clearly evidences bad faith on the Respondent.

That the trademark RECALCINE and the domain name <recalcine.com> are absolutely identical merely by eliminating the particle corresponding to the upper level of the generic domain.

The Respondent does not conduct any activity leading to the supposition of any interest or legitimate use of the domain name <recalcine.com>; Neither is the Respondent known or identified with such denomination in any part of the world.

That Respondent is well aware of the reputation and notoriety of Complainant’s trademark since he resides in the country where the presence of the laboratory is very relevant, reason why he can not allege ignorance regarding a clearly notorious fact.

That Respondent registered the domain name <recalcine.com> clearly aware of the fact that he was purchasing an identification that does not belong to him. That such trademark enjoys a great reputation and notoriety and was created and registered by Complainant.

Lastly, Complainant has requested under paragraph 4 (i) of the Policy, that the Administrative Panel appointed in this proceeding issue a decision ordering that the contested domain name be transferred to the Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

 

6. Discussion and Findings

The Panel considers that the Respondent by registering the contested domain name with Internet Names Worlwide, A Division Of Melbourne It Ltd., (an ICANN accredited domain name registrar), it agreed to be bound by all terms and conditions of the applicable Service Agreement, and any pertinent rule or policy, and particularly agreed to be bound by the Policy (incorporated and made a part of the Service Agreement by reference), which policies request that proceedings be conducted according to the Rules and the selected administrative-dispute-resolution service provider's supplemental rules, in the present case being the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy. Therefore, the dispute subject matter of this proceeding is within the scope of the above mentioned agreements and Policy, and this Panel has jurisdiction to decide this dispute.

Furthermore, the Panel considers that in the same manner by entering into the above mentioned Service Agreement, the Respondent agreed and warranted that neither the registration of its domain name nor the manner in which it may intend to use such domain name will directly or indirectly infringe the legal rights of a third party, and that in order to resolve a dispute under the Policy, Respondent’s domain name registration services may be suspended, cancelled or transferred.

The Panel also particularly considers that it is essential to dispute resolution proceedings that fundamental due process requirements be met.

Such requirements include that the parties and particularly the Respondent in this case be given adequate notice of proceedings initiated against them; that the parties may have a fair and reasonable opportunity to respond, exercise their rights and to present their respective cases; that the composition of this Panel be properly made and the parties be notified of the appointment of this Panel; and, that both parties be treated with equality in these administrative proceedings.

In the case subject matter of this proceeding, the Panel is satisfied that this proceeding has been carried out by complying with such elemental due diligence requirements, and particularly contemplating the notification of the filing of the Complaint and the initiation of this proceeding giving the Respondent a right to respond. That the default of the Respondent to submit a response is not due to any omission under this proceeding. That there is sufficient and adequate evidence confirming the above.

Considering that the Respondent has defaulted in submitting a response to the allegations of Complainant, this Panel as directed by paragraphs 14 (a) and (b) and 15 (a) of the Rules 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 that it deems applicable, and may draw such inferences there from as it may consider appropriate on the basis of Complainant’s undisputed representations.

Paragraph 4 (a) of the Policy directs that the Complainant must prove the presence of each of the following elements: (i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and, (ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and, (iii) that the Domain Name has been registered and is being used in bad faith.

The first element that the Complainant must prove under Paragraph 4 (a) of the Policy is that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Panel notes that the entire mark "RECALCINE" is included in the domain name, the only addition, being the ".com." The addition of the phrase is non-descriptive and does not alter the value of the mark represented in the domain name. In addition, the .com is a necessary element required for registration of any domain name, and not voluntary and arbitrarily chosen additions to be included by registering parties.

This Panel considers that Complainant has rights over the RECALCINE mark, and that this mark is identical to the domain name that has been registered by the Respondent.

Furthermore, this Panel finds that there is no indication that the Respondent has any rights or legitimate interests in respect of the domain name as it has not used or prepared to use the RECALCINE domain name in connection with any bona fide offering of goods or services as contemplated under Paragraph 4 (c) (i) of the Policy; nor that the Respondent is commonly known by the domain name as contemplated under Paragraph 4 (c) (ii) of the Policy; nor that the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue as contemplated under Paragraph 4 (c) (iii) of the Policy.

The Panel also finds that Respondent has used the Domain Name in bad faith, in particular but without limitation, pursuant to Paragraph 4 (b) of the Policy, in view that Respondent registered the domain name with the purpose of seeking an unjustifiable economic benefit from the Complainant in exchange for the transfer of the domain name. Therefore, has made a bad faith use of the domain name. Finally, from the information and facts that were analyzed, and from the lack of evidence to the contrary, Respondent’s conduct and passive use of the domain name under dispute must be considered as questionable and inferred by this Panel, on the basis of Complainant’s undisputed representations, as bad faith acting by Respondent.

Respondent did not address Complainant’s contentions.

Lastly, it is hereby noted that no settlement has been reached by the Parties and made known to this Panel prior to the rendering of this Panel’s decision, which may eventually affect or give ground for termination of this administrative proceeding as provided for under paragraph 17(a) of the Rules, nor is this Panel aware of the existence or initiation of any other type of legal proceeding before a court of competent jurisdiction for independent resolution, regarding the domain name dispute as contemplated under paragraph 4 (k) of the Policy.

 

7. Decision

Therefore, and in consideration to the Complaint’s compliance with the formal requirements for this domain dispute proceeding, to the factual evidence and legal contentions that were submitted, to the conclusive confirmation of the presence of each of the elements contemplated in Paragraph 4 (a) (i), (ii), and (iii) of the Policy, and on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and other applicable rules and principles of law, as directed by paragraphs 14 (a) and (b) and 15 (a) of the Rules, this Panel decides:

(1) that the Domain Name registered by Respondent is identical to Complainant’s trademark RECALCINE;

(2) that Respondent has no rights or legitimate interests in respect of the recalcine.com Domain Name; and

(3) that the recalcine.com Domain Name has been registered and is being used in bad faith by the Respondent.

Therefore, the Panel requires, that the domain name <recalcine.com> be transferred to Laboratorios Recalcine S.A., Complainant.

 

 

Pedro W. Buchanan
Sole Panelist

Dated: April 19, 2001