Early in the year, CAMPOFRÍO FOOD GROUP, S.A., one of the most important companies in the food sector, has filed a Complaint before the World Intellectual Property Organization (WIPO) in order to request the transfer of the domain name “campofrio.com”, registered since 1999 by a individual person and linked to a Spanish language website in connection with a town called Campofrío, located at Huelva (Spain), containing Information about history, economy and population of this place, as well as popular monuments, mainly the bullfighting arena, the oldest one in Spain and in the world, built in 1716.
The resolution of the WIPO Arbitration and Mediation Center on Abril 15th 2020 (case No. D2020-0427, Campofrio Food Group S.A. Unipersonal (S.A.U v. Javier García Quintas)) adopted in the framework of the Uniform Domain Name Dispute Resolution Procedure (UDRP Procedure), was really suprising because it rejects the Complainant´s claims by considering the requirements to accept such complaint not fulfilled.
CAMPOFRÍO FOOD GROUP, S.A. allegued the notorius character of the Trademark CAMPOFRIO, registered for over two decades at national and international level, and arguing that the disputed domain name was registered in November 1999, but it was inactive at the time of the Complaint. Moreover, it was referred the Respondent´s bad faith by registering several domain names for well-know Trademarks, which have been transferred to their respective Trademark owners, an activity likely to be considered cybersquatting.
However, the Respondent alleged that no evidence of use on bad faith was submitted to demonstrate a use of the disputed domain name that may lead to confusion or association of the registered trademark, as the Respondent and the Complainant are not competitors. Furthermore, the Respondent alleged having used the disputed domain name in good faith for the last 20 years, and having a legitimate interest in Spanish geographical domain names, holding other various geographic domain names, including “orense.com”, “ferrol.com”, “baqueiraberet.com”, “palamos.com”, “galicia.org”, “mogan.com”, “telde.com”, “lugo.net”, “pontevedra.net”, “caceres.net”, “badajoz.net” y “santander.net”), in line with the registration of the domain name “campofrio.com”.
In his defense, the Respondent pointed out that the use of some of the Complainant’s domain names alleged in the Complaint is confusing, because some of these domain names, namely “campofriofg.com”, “campofriofg.es”, “campofriofg.net” y “campofriofg.pt” redirect to the website of the Mexican company Sigma Alimentos referring to the trademark SIGMA ALIMENTOS (of which CAMPOFRÍO FOOD GROUP, S.A. is subsidiary), and the domain name “campofrio.co.uk” is inactive.
The arbitrator analised, on the basis of the provided evidence, the fulfilment of the requirements on the Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy to consider the Complainant claim:
i. The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights
The expert considers this requirement is fulfilled because there is an evident identity with CAMPOFRIO Trademarks, ownership of the Complainant, who has an extensive global portfolio including registrations all over the world.
ii. The Respondent has no rights or legitimate interests in respect of the domain name
Concerning this point, the analysis was inconclusive: although the Complainant submitted evidence to demonstrate prima facie the absence of legitimate rights or interests, the Respondent verified the domain name registration since 1999, in use as of February 5th, 2001 and until March 30th, 2009, for cultural Information purposes.
However, the Complaint emphasized that the Respondent owned several registered domain names, some of them linked to parked pages websites with pay-per-click (“PPC”) links, which does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the Complainant´s trademark or otherwise mislead internet user. Nevertherless, in this case, no evidence was provided whether those PPC links were related to Complainant´s trademark or if such PPC links had such impact on the Trademark, thus, this requirement has not been considered fulfilled.
iii. The domain name has been registered and is being used in bad faith.
This is where the arguments of the both parties have really conflicted, because the Complainant, at this point, argued that the Respondent registered the disputed domain name to obstacle its registration by the Complainant.
Such line follows the idea that this registry served to the aforementioned pattern of behaviour by obtaining domain names which incoporate well-known trademarks, for the purpose of selling or using them in bad faith, taking advantage of the reputation of the trademark owners, as it was recognized in previous cases dated between 2000 and 2008.
Moreover, the Complainant also invoked the recognition of notoriety of its Trademark CAMPOFRIO by a decision of the Spanish Patent and Trademark Office dated July 23rd, 2015.
As for the Respondent, he pleaded owning continuously the domain name without any transfer or acquisition in all the 20 years of registration, therefore, the expert understood as relevant date to take into account the date of the registration of the disputed domain name in 1999.
The evidence of use of the domain name proved that it was in use at least since February 5th, 2001, within a year and a half after its registration, considered by the expert a reasonable time to prepare a website: therefore, it appears to be a use in good faith and no in conection to the CAMPOFRIO trademark or the Complainant business, bearing in mind that it was not proved that in 1999, around the date of registration, the trademark CAMPOFRÍO was so widely recognised to be neccesarily known to the Respondent.
Hence it was not possible to determine whether that the disputed domain name was (al least temporally) used in bad faith with the intention to ride on the Complainant´s trademark current reputation, thus, breaking with the past criteria established by previous decisions of the authority (some of those decisions allegued by the Complainant to point out that the Respondent had previously been compelled to transfer certain domain names which included well-known trademarks in their denomination.
All in all, this decision is a remarkable change in approach by the authority with a general tendency in this kind of procedure to grant the transfer of domain names to the holders of well-known Trademarks; but in this case the burden of proof regarding the existence of bad faith has tipped the balance in favour of the Respondent.