televisaespectaculos.com

December 9, 2003

2003, gTLD México

WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Grupo Televisa, S.A., Televisa S.A. de C.V., Comercio Mas, S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v. Registrant info@ fashionid.com 9876543210
Case No. D2003-0735

1. The Parties

The Complainant is Grupo Televisa, S.A.; Televisa, S.A de C.V; Comercio M ás, S.A. de C.V.; Estrategia Televisa, S.A. de C.V. of Mexico; and Videoserpel, Ltd. of Switzerland; represented by Leventhal, Senter and Lerman, PLLC, United States of America.

The Respondent is described as Registrant info@fashionid.com 9876543210, of Yemen, British Virgin Islands.

2. The Domain Name and Registrar

The disputed domain name <televisaespectaculos.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 17, 2003. On September 19, 2003, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain name at issue. On September 22, 2003, OnlineNic, Inc. d/b/a China-Channel.com transmitted by email to the Center its verification response confirming that the Uniform Domain Name Dispute Resolution Policy applies, and that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Registrar informed the Center that the Respondent has not submitted in its Registration Agreement to the jurisdiction of the location of the principal office of the Registrar.

In light of the Registrar’s response with respect to the mutual jurisdiction rule, the Center notified the Complainant was administratively deficient, and requested the Complainant to cure the deficiency by submitting an Amendment to the Complaint with an alternative mutual jurisdiction rule. The Complainant filed a Request for Reconsideration and Amendment to the Complaint on September 29, 2003. In its Request for Reconsideration, the Complainant maintained the view that the principal office of the Registrar is in California, United States, and that pursuant to the Registrar Agreement available on the Registrar’s website, the Respondent submitted to the mutual jurisdiction of the courts in California. In the alternative, if the Panel finds that the Respondent has not submitted to the jurisdiction of the courts of the principal place of the Registrar, the Complainant filed an amendment to its claim and submitted to the jurisdiction of the courts at the location of the Respondent’s address in Yemen, Virgin Islands, and the United Kingdom.

The Center verified that the Complaint, together with the amendment to the Complaint, save for the choice of mutual jurisdiction, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the ”Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 21, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was November 10, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 12, 2003.

The Center appointed Daniel J. Gervais as the sole panelist in this matter on November 25, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is an international media and entertainment company incorporated in Mexico since 1972. Complainant is the largest media company in the Spanish-speaking world and a dominant figure in the international entertainment, media and publishing business: the Complainant produces Spanish-language television programs, which are distributed through its cable and satellite systems, and are also licensed to other broadcasters throughout the world; the Complainant is a publisher and an international distributor of Spanish-language magazines; and it also engages in other businesses, including radio production and broadcasting, professional sports and show business promotions, paging services, feature film production and distribution, dubbing, and a major Spanish-language Internet portal, EsMas.com. The Complainant operates maintains websites at several domain names, including <esmasespectaculo.com>, <esmasespectaculo.net>, <esmasespectaculos.com> and <esmas.com>.

The Complainant sent a cease and desist letter via email and courier to the Respondent, requesting the transfer of the disputed domain name from the Respondent in a letter of May 27, 2003. The Respondent did not respond to the email communication and the letter sent by courier was returned as undeliverable. The Complainant sent a follow-up letter via email to the Respondent on June 10, 2003, and has not received any response to it.

5. Parties’ Contentions

A. Complainant

The Complainant’s arguments are focused on both the procedural and substantive aspects of the claim.

1. Procedural Aspects of the Claim

The Registrar informed the Center that the Respondent has not submitted in its Registration Agreement to the mutual jurisdiction of the location of the principal office of the Registrar. The Complainant asserts that:

a. Based on the text of the Registration Agreement available on the Registrar’s website, “www.onlinenic.com/english/agreements/serviceterms.html”, the Respondent submitted to the jurisdiction of the courts of California, or the U.S. County Court for Almeida County; and

b. The Principal office of the Registrar is in California, United States of America.

The Complainant therefore chose courts at the location of the principal place of the registrar, which is, according to the Complainant, California, as the mutual jurisdiction in the present dispute.

The Complainant requests the Panel to determine that the principal office of the Registrar is located in California and that the initial choice of mutual jurisdiction is valid. The Complainant states that the Panel has jurisdiction and power to make such a decision. In the alternative, if the Panel does not make such a decision, the Complainant submits the Amendment to the Claim, in which he submits to the jurisdictions of the courts at the location of the Respondent’s address, which is indicated as Yemen, British Virgin Islands.

2. Substantive Aspect of the Claim

The Respondent registered and is using a domain name that is confusingly similar to Complainant’s trade name and marks. According to the information in WHOIS database, the Respondent registered domain name <televisaespectaculos.com> on or about December 16, 2002. According to the Complainant, the Respondent is using the disputed domain to provide links to various commercial and pornographic websites, as well as the service “Top TEN Search Engines in the world”.

The Complainant’s marks are well known marks, and have been used by the Complainant in connection with its media and entertainment businesses. The first use of the Complainant mark TELEVISA occurred in 1973, and the mark has been used in commerce since 1976. TELEVISA ESPECTALUSOS is a section of the Complainant’s news division, and has been used by the Complainant in connection with its entertainment related services.

The Respondent could not have been unaware of the Complainant’s long-standing rights in its marks, which is known and recognized internationally. The Complainant marks have been registered in 62 countries, including Mexico, United States, and United Kingdom. The disputed domain name is confusingly similar to the Complainant’s marks and has been used by the Respondent in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Procedural Aspect – Mutual Jurisdiction rule

The Panel must discuss first the issue of Mutual Jurisdiction in the Amended Complaint.

In its Complaint submitted on September 17, 2003, the Complainant submitted to the jurisdiction of the courts of the principle place of the Registrar. In its letter of September 22, 2003, the Registrar informed the Center that in its Registration Agreement the Respondent did not submit to the jurisdiction of the courts of the principle place of the Registrar.

The Complainant believes that the Respondent submitted to the courts of the principal place of the Registrar, and that the principal place of the Registrar is California. The Complainant based its claims on a copy of the Registration Agreement available on the Registrar’s website, press release from the Registrar, and a list of ICANN accredited Registrars, all of which provides that the Registrar is located in the United States. The Complainant required the Panel to reconsider the decision by the Center to request Amendment to the Complaint, and make a decision that the choice of the jurisdiction of the courts of the principal place of the Registrar is valid. In the alternative, if the Panel permits the amendment to the Complaint, the Complainant submits to the jurisdiction of the location of the Registrant’s address.

Paragraph 1 and 3 (b)(xiii) of the Rules state that the Complaint must specify an express choice of one (or both) of the two Mutual Jurisdiction options, i.e. the courts at the location of the principal office of the registrar (provided the domain name holder has submitted in its registration agreement to that jurisdiction for court adjudication of disputes concerning or arising from the use of the domain name) and/or the domain name holder’s address as shown for the registration of the domain name in Registrar’s WHOIS database at the time the complaint is submitted to the Provider.

The purpose of the Policy is to provide rules for the resolution of disputes between the Registrant and a third party. (See paragraph 1 of the Policy). The Policy does not regulate the relationship between the Registrar and the Registrant. This Panel has neither the power nor the jurisdiction to decide on the validity and the scope of the agreement between the Registrar and the Respondent. As indicated in another similar case: “The information about OnlineNIC, Inc.’s principal place of business and whether or not the Respondent had submitted in his or her registration agreement to the jurisdiction of the courts in that place is information which is peculiarly in the possession of OnlineNIC, Inc. and the Respondent. It is not something that the Complainant could reasonably be expected to know.” (See Wal-Mart Stores, Inc. v. Su Rong Ye, WIPO Case No. D2002-0771, See also UBS PaineWebber Inc. v. info@fashionid.com 9876543210, WIPO Case No. D2003-0349). The Panel also does not have the power or the jurisdiction to declare an office of the Registrar to be the principal office for the purposes of this proceeding.

The Registrar did not inform the Center of its principal place of business. The Complainant submits that the Registrar’s principle place of business is in California. The communication from the Registrar only indicated that the Registrant did not submit to the jurisdiction of the courts of the principal place of the Registrar. The evidence presented by the Complainant as to the mutual jurisdiction of the principal place of the Registrar’s was not sufficient to establish that in the Registration Agreement the Respondent submitted to the jurisdiction of the principal place of the Registrar, nor was it sufficient to establish that the principal place of the Respondent is in California. Based on the above, the Center was thus reasonably justified in requiring the amendment to the Complaint. The Panel, therefore, allows the Amendment to the Complaint, and recognizes that the Complainant is subject to the jurisdiction of the location of the Respondent’s address, which is Yemen, British Virgin Islands. Whether courts in other jurisdictions are competent in the event of a dispute is not a matter that this Panel can decide.

The Panel, however, reiterates the words of the panelist in UBS PaineWebber Inc. v. info@fashionid.com 9876543210 (See WIPO Case No. D2003-0349): “the possible lack of a requirement by ICANN that registrars publicly identify their principal office for the purposes of Rule 3(b)(xiii). This would enable Complainants to make an informed choice when submitting to a Mutual Jurisdiction. The Panel notes that this is an issue for the attention of ICANN.”

B. Substance of the Complaint

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements is satisfied:

1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section 6.B.1);

2. The Respondent has no rights or legitimate interests in respect of the domain name (see below, section 6.B.2); and

3. The domain name has been registered and is being used in bad faith (see below, section 6.B.3.).

Paragraph 4(a) of the Policy clearly states that the burden of proving that all these elements are present lies with the Complainant.

Pursuant to paragraph 15(a) of the Rules, the Panel shall decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom, as it considers appropriate.

1. Is the domain name Identical or Confusingly Similar to a Trademark in which Complainant has Rights?

This question raises two issues: (1) does the Complainant have rights in a trademark; and (2) is the domain name identical or confusingly similar to such trademark or service mark.

As to the first question, the wording of the paragraph 4(a) (i) to “trademark or service mark” has been interpreted by numerous Panels in the past to include both registered marks and the common law marks. See inter alia The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; United Artists Theatre Circuit, Inc. v. Domains for Sale Inc. WIPO Case No. D2002-0005, The Professional Golfers’ Association of America v. Golf Fitness Inc., a/k/a Golf Fitness Association, WIPO Case No. D2001-0218; Brooklyn Institute of Arts and Sciences v Fantastic Sites, Inc. National Arbitration Forum No.: FA0009000095560. With respect to the latter, the Complaint must show that the mark has been in continuous use (See United Artists Theatre Circuit, Inc. v. Domains for Sale Inc, already cited; Keppel TatLee Bank Limited v. Lars Taylor, WIPO Case No. D2001-0168) and that the mark achieved secondary meaning (”distinctive character”) in association with the Complainant. (See Australian Trade Commission v. Matthew Reader, WIPO Case No. D2002-0786; (1) Galatasaray Spor Kulubu Dernegi (2) Galatasaray Pazarlama A.S. (3) Galatasaray Sportif Sinai Ve Ticari Yatirimlar A.S. v. Maksimum Iletisim A.S., WIPO Case No. D2002-0726).

The record confirms that Complainant has been continuously using the mark TELEVISA since 1973, and that the mark has been registered in 62 countries, including Mexico, the United States, and the United Kingdom. The record also confirms that the Complainant has been using the mark TELEVISA ESPECTACULOS for its services nationally and internationally. The record confirms that the mark is undoubtedly associated with the Complainant. Therefore, the Panels finds that the Complainant has rights in the mark TELEVISA ESPECTACULOS.

As to the second question, the Panel finds that the domain name is identical to the “TELEVISA ESPECTACULOS” mark and confusingly similar to the Complainant’s marks. The disputed domain name <televisaespectaculos.com> incorporates the Complainant mark “TELEVISA” with a generic word “Espectaculos” (which in Spanish means “entertainment” or “shows”) and the generic top-level domain reference “.com”. As a rule, when a domain name wholly incorporates a complainant’s mark and adds a generic word that is sufficient to establish confusing similarity for purposes of the Policy. See Experian Information Solutions, Inc. v. BPB Prumerica Travel (a/k/a SFXB a/k/a H. Bousquet a/k/a Brian Evans) WIPO Case No. D2002-0367). Confusion is only heightened when the generic word added by Respondent is descriptive of the Complainant’s services marketed in relation to the trademark. See, e.g., Volvo Trademark Holding AB v. Lost in Space, SA, WIPO Case No. D2002-0445; Arthur Guinness Son & Co. (Dublin) Ltd v. Steel Vertigogo, WIPO Case No. D2001-0020; and Arthur Guinness Son & Co. (Dublin) Limited v. Tim Healy/BOSTH, WIPO Case No. D2001-0026).

2. Does the Respondent Have Rights or Legitimate Interests in the domain name?

The Complainants submits that the Respondent has no rights or legitimate interests in the domain name based on Complainant’s prior use of the “TELEVISA ESPECTACULOS” mark. The Respondent, whom did not file a Response, did not dispute this contention nor provide information as to its interests to use the domain name.

According to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

“(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are 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.”

There were no elements introduced in evidence to show that the Respondent is or was commonly known by the domain name. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the domain name. Quite contrary, the evidence suggest that the Respondent is using the disputed domain name for commercial gain, and that such use of the domain name may tarnish the Complainant’s mark.

Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the domain name.

3. Was the domain name Registered and Used in Bad Faith?

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:

(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) Respondent has 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 Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s 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 Respondent’s website or location or of a product.

There is evidence of the situation described in paragraph (iv) and some evidence of a pattern as contemplated in paragraph (ii). The relevant facts are mentioned below.

The Respondent registered the domain name in bad faith. Apart from the famous nature of the Complainant’s marks, the domain name is identical to the Complainant’s mark “TELEVISA ESPECTACULOS”. It is reasonable to conclude that only someone who was familiar with the Complainant’s mark would have registered the identical domain name. A number of decisions under the Policy stand for the proposition that in respect of famous marks, which have a higher level of protection in international intellectual property agreements (see e.g. Article 16(2) and (3) of the TRIPS Agreement), the person who registers a confusingly similar domain name should be willing to show an intention to express himself or herself by responding to communications and indicating good faith use of the domain name. See Pharmacia & Upjohn AB v. Dario H. Romero, WIPO Case No. D2000-1273; Advanced Micro Devices, Inc. v. [No Name], WIPO Case No. D2000-0515; Telstra Corporation, Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Encyclopaedia Britannica, Inc. v. Zuccarini and the Cupcake Patrol aka Country Walk aka Cupcake Party, WIPO Case No. D2000-0330; eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633 and Ellerman Investments Limited and The Ritz Hotel Casino Limited v. Antonios Manessis (trading as .com and manessis.com), WIPO Case No. D2001-1461. The Respondent did not respond to any communication from the Center and did not indicate good faith use of the disputed domain name in by any means.

It is difficult to conceive that Respondent chose to register domain name <televisaespectaculos.com> by accident. In fact, it is fairly difficult to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be infringing or the Complainant’s marks.

In addition, the Respondent is using the disputed domain name for commercial purposes creating likelihood of confusion with the Complainant’s marks. Users who visit the disputed domain name are offered links to various commercial and pornographic websites, as well as a link to the “Top TEN Search Engines in the world”.

As to paragraph 4(b)(ii), although it is questionable whether the Respondent registered the domain name solely for the purpose of selling it to the Complainant, the Respondent is known to have registered in the past the domain names that correspond to well-known marks. The Panel does not express an opinion as to whether this ground alone would be sufficient for a finding of bad faith in this case but notes that it clearly reinforces the elements of bad faith use already mentioned.

The Panel finds for the Complainant on this third element of the test.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <televisaespectaculos.com>, be transferred to the Complainant.

Daniel J. Gervais
Sole Panelist

Dated: December 9, 2003.

No Comments

moonpalace.com

December 5, 2003

Joel Gómez

2003, gTLD México

WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Palace Holding, S.A. de C.V., v. Priston Entertainment Ltd.
Case No. D2003-0705

1. The Parties

The Complainant is Palace Holding, S.A. de C.V., Cancun, Mexico (”the Complainant”), represented by Curtis, Mallet-Prevost, Colt & Mosle LLP, United States of America.

The Respondent is Priston Entertainment Ltd., C/O Collin Williams and Ingrid Williams, Montreal, Canada (”the Respondent”), represented by Greenspoon Perreault, S.E.N.C., Canada.

2. The Domain Name and Registrar

The disputed domain name <moonpalace.com> (”the Domain Name”) is registered with DomainPeople (”the Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on September 6, 2003. On September 9, 2003, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 16, 2003, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced September 17, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response October 7, 2003. The Response was filed with the Center October 7, 2003.

The Center appointed Tony Willoughby, Mark Partridge and David E. Sorkin as panelists in this matter on November 18, 2003. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a Mexican corporation which trades under the name Palace Resorts and which owns and operates a ‘family’ of hotels all of which have the word “Palace” in their names. One of the hotels in question is called The Moon Palace.

The Complainant is the registered proprietor of Mexican and US trade mark registrations for the mark MOON PALACE. The Mexican registration is number 530400 dated August 7, 1996, and the US registration is number 2453148 dated May 22, 2001. Both registrations are in class 42 and cover, inter alia, hotels and related services. It appears that the Complainant acquired the Mexican registration from a company named Inmobiliaria Puerto Bonito SA by way of an assignment on August 20, 1999.

The Respondent is a Canadian corporation whose prime movers are Collin and Ingrid Williams. The Respondent is engaged in, inter alia, travel agency services.

In early June 1997, Collin and Ingrid Williams spent a holiday at one of the Complainant’s hotels in Mexico and became members of a vacation club operated by World Vacation Travel SA (”WVT”), an organization associated with the Complainant. By joining this club and paying over appropriate sums of money the Williamses were able to acquire vacation certificates, which they were able to pass on to their customers. The certificates provide for stays at hotels operated by the Complainant.

The WVT membership documentation confirmed to the Williamses that they were now “WVT travel agents/members” and they were each issued with WVT travel agent cards. The membership documentation confirmed to the Williamses that “as World Vacation Travel member/agent, you are also now a member of the Palace Resorts family”, Palace Resorts being the trading name of the Complainant.

On June 25, 1997, the Respondent registered the Domain Name.

Continuously thereafter the Williamses have corresponded with the Complainant in relation to commissions on holidays organized via the Williamses membership of the WVT Travel Club. The holidays cover various of the Complainant’s hotels, including The Moon Palace Hotel.

Over the years the business has developed into a substantial one. In the last quarter of 1997, gross resort sales totaled US$17,000 yielding commissions of approximately US$2,500. In the first 9 months of 2003, gross resort sales totaled in excess of 1.6 million Canadian dollars yielding commissions of in excess of 375,000 Canadian dollars.

On August 27, 1997, Collin Williams filed for registration in Quebec, Canada, of the business name “Moon Palace Vacations”. On February 3, 1999, Collin Williams transferred the business name to the Respondent.

The Respondent contends and the Panel is prepared to accept as fact that the business of providing holidays at the Complainant’s resort hotels has been conducted throughout by the Respondent and via a website connected to the Domain Name.

However, it is plain that while the Respondent has been trading as Moon Palace Vacations via the website at “www.moonpalace.com” since late 1997, throughout that period the Complainant was communicating not with the Respondent, but with Mr. and Mrs. Williams. There is nothing before the Panel to suggest that the Complainant will have been aware of the Respondent, its trading name or its website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is identical to its trade mark MOON PALACE if one ignores the generic “.com” domain suffix.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. In a nutshell, the Complainant’s case is that the Respondent registered the Domain Name with full knowledge of the Complainant’s rights in the name MOON PALACE, that the Williamses membership of the WVT Vacation Club gave them no right and gave the Respondent no right to represent any kind of formal relationship with the Complainant (beyond membership of the club) and that the Respondent’s use of the Domain Name has been for commercial gain with the intention of misleading or diverting consumers from the Complainant and to damage the reputation of the Complainant. None of this, in the view of the Complainant can constitute a right or legitimate interest in respect of the Domain Name.

The Complainant contends that the Domain Name was registered and is being used in bad faith. In support, the Complainant relies on what is said above in relation to the Respondent’s rights or legitimate interests in respect of the Domain Name. Additionally, the Complainant contends that the Respondent will derive commercial gain from the fact that Internet users will believe that the Respondent’s website connected to the Domain Name is an authorized or official website for making reservations at the Complainant’s hotels.

Moreover, the Complainant observes that it has no control over the Respondent’s website and/or the use of information collected by the Respondent from confused consumers. To that extent, therefore, the Complainant’s reputation is out of its control. The Complainant also refers to the Respondent’s use of “maps” on its website which are adaptations of the Complainant’s copyright works.

B. Respondent

The Respondent acknowledges that the Domain Name comprises the entire MOON PALACE trade mark. However, the Respondent asserts that the Complainant must establish that it acquired rights in and to the trade mark prior to the Respondent’s registration of the Domain Name. The Respondent contends that it registered the Domain Name well before the Complainant had acquired rights to the trade mark. The Respondent contends that the Complainant had no rights to the trade mark until it acquired the Mexican registration on August 20, 1999.

The Respondent contends that the material put before the Panel does not constitute evidence that the Complainant has established a reputation in the travel industry for quality services. Moreover, the Respondent contends that the Complainant has failed to provide any concrete evidence of actual confusion.

On this basis, the Respondent contends that the Complainant has “not satisfied the burden of proof to establish that the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.”

The Complainant contends that it has rights or legitimate interests in respect of the Domain Name. It refers to the Williamses membership of the WVT Vacation Club. It points to the fact that the Complainant and the WVT Vacation Club are under common beneficial ownership. It points to the fact that the Williamses were encouraged to regard themselves as members of the Palace Resort Family and it produces evidence to show that the Williamses could reasonably assume that in being members of the WVT Vacation Club, they were in one way or another associated with the Complainant.

In those circumstances, the Respondent contends that it was not unreasonable for the Respondent to have held itself out as being associated with the Complainant.

The Respondent has produced evidence to show that it has since October 1997, conducted a significant business under the name Moon Palace Vacations and via its website connected to the Domain Name. The Respondent contends that this is a bona fide offering of services within the meaning of paragraph 4(c)(i) of the Policy.

The Respondent also contends that it is commonly known by the Domain Name (paragraph 4(c)(ii) of the Policy) given the reputation and goodwill that its business has developed since February 1998.

Finally under this head, the Complainant contends that it makes fair use of the Domain Name in the legitimate exercise of its business (paragraph 4(c)(iii) of the Policy).

It registered the Domain Name to conduct business through the website connected to the Domain Name. It contends the fact that the website, when one gets there, makes clear the distinction between the Respondent and the services associated with the Complainant. It provides a link to the Complainant’s Internet site at “www.palaceresorts.com” and it features a disclaimer.

The Respondent contends that the sole revenues generated by the business are sums emanating from the Complainant and/or WVT. It therefore has neither reason nor any commercial advantage in misleading or diverting consumers or tarnishing the trade mark.

The Respondent denies that it has ever claimed any rights of ownership in respect of the Complainant’s establishments, assets or trade marks (as alleged by the Complainant) and the Respondent further contends that by becoming members of the WVT Vacation Club, the Williamses (and therefore the Respondent) were granted an implied licence to use the trade mark and consequently to make fair use of the Domain Name.

As to the allegation of bad faith registration and use, the Respondent denies the allegation. The Respondent contends that the Domain Name was neither registered in bad faith nor was used in bad faith since (a) the Williamses were solicited by the Complainant and/or WVT to become outside sales travel agents of the Complainant and/or WVT and/or the Palace Resorts “family”, and (b) the Respondent’s business is a legitimate activity for which the Complainant and/or WVT has paid, and continues to pay, the Respondent significant commissions.

The Respondent contends that the Complainant has failed to produce any evidence of actual confusion of Internet users and asserts that any such confusion is most unlikely given the clarity of the information and disclaimer on its website. The Complainant contends that any allegations of the Complainant that the Respondent has in any way behaved improperly are falsely based.

The Respondent denies that any of the matters set out in paragraph 4(b) of the Policy are applicable to the Respondent’s position in the matter.

The Respondent contends that its efforts to advertise promote and sell travel to the Complainant’s hotels contradict any finding of bad faith registration and use of the Domain Name.

The Respondent contends that the Complainant is guilty of Reverse Domain Name Hijacking. In this regard the Respondent contends that the Complainant’s evidence has been selective and misleading. It contends that the Complainant knew or ought to have known that it had not acquired rights to the trade mark prior to the Respondent’s registration of the Domain Name. It contends that the Complaint was brought in circumstances where the Complainant knew of the likelihood that the Respondent possessed legitimate rights in respect of the Domain Name. It refers to the Respondent’s business which has been conducted for more than six years and it also refers to the fact that the Complainant has paid substantial commissions to the Respondent over that period and in so doing has acquiesced in the Respondent’s use of the Domain Name.

The Respondent contends that the Complainant, being aware of the substantial goodwill of the Respondent (the Respondent being among the top five outside sales travel agents of the Complainant and/or WVT and/or the Palace Resorts “family”) now wants to appropriate that good will by depriving the Respondent of the Domain Name.

The Respondent contends that the Complainant’s motive in filing this Complaint is malicious and that the Complainant is acting with total disregard to the fact that (a) the Respondent has a legitimate interest in the Domain Name and (b) the Respondent did not register and does not use the Domain Name in bad faith.

The Respondent contends that the Complainant is refusing to honour several hundred travel certificates which the Complainant and/or WVT sold to the Williamses for some US$35,000 and that this is with a view to compelling the Respondent to transfer the Domain Name. The Respondent contends that the Complainant has filed the Complaint to achieve the same result.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove that

(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and

(iii) The Domain Name has been registered in bad faith and is being used in bad faith.

If the Complaint fails, the Panel has to have regard to paragraph 15(e) of the Rules and in particular the following sentence namely:

“If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at reverse domain name hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its Decision that the Complaint was brought in bad faith and constitutes and abuse of the Administrative Proceeding.”

Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as meaning “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.”

A. Identical or Confusingly Similar

In assessing whether or not a domain name is identical or confusingly similar to a complainant’s trade mark, it is in most cases appropriate to ignore the generic domain suffix. Ignoring the generic domain name suffix, the Domain Name is identical to the Complainant’s trade mark.

Where, as in this case, the Domain Name is identical to the Complainant’s trade mark, it is not necessary under this head for the Complainant to establish likelihood of confusion. Accordingly, the fact, if it be a fact, that the Complainant has not, as the Respondent asserts, established likelihood of confusion has no bearing on the matter under this head.

Accordingly, the Panel finds that the Domain Name is identical to a trade mark in which the Complainant has rights.

However, before leaving this topic, there are two allegations of the Respondent which the Panel wishes to address namely:

1. The Respondent asserts that the Complainant did not acquire rights to the MOON PALACE trade mark until after the Respondent’s date of registration of the Domain Name. It is to be noted that in one of the Respondent’s exhibits, which features extracts from the Respondents website back in January 1999, the following appears:

“In 1996 Palace Resorts completed construction of the Moon Palace, the latest addition to their growing family of five star rated exclusive all inclusive Cancun resorts.”

Accordingly, while it may be that the Complainant only acquired the registered rights after the date of registration of the Domain Name, it does not appear that there is any dispute that the Complainant was very closely associated with the trade mark from the outset in 1996. Certainly, in late 1997 when the Respondent commenced business, the Respondent was in no doubt that the Complainant had rights of some kind to the MOON PALACE trade mark in Mexico.

2. The Respondent denies that the Complainant has produced evidence of a reputation and goodwill in respect of the trade mark. The Panel finds this claim somewhat strange given that the Respondent asserts reputation and goodwill in its name Moon Palace Vacations, a reputation and goodwill built up through a business which is dependent entirely upon business conducted directly or indirectly with the Complainant. Accordingly, if the Respondent has a reputation and goodwill in its trading name, one would also expect the Complainant to have a reputation and goodwill in respect of all its trading names including its hotel names.

B. Rights or Legitimate Interests

For reasons given below, the majority of the Panel concludes that it is not necessary to reach a finding on this element of Complainant’s claim.

The dissenting panelist, Tony Willoughby, is of the view that the Respondent has no rights or legitimate interests in respect of the Domain Name. In his view, if one takes X’s trade mark, knowing it to be X’s trade mark, and without X’s permission and uses that trade mark without any addition or adornment as a domain name for business purposes, it is almost inevitable that confusion of some kind will result. A not insignificant number of Internet users are likely to believe that any website or email address connected to the domain name is an official site or address of the trade mark owner. The fact that there may be a disclaimer on the website is of no significance. By the time that the visitor gets there, the damage has been done and/or the registrant has achieved the business opportunity which it might not otherwise have achieved. In the case of email, of course, a website disclaimer is of no effect. The phenomenon of misdirected emails is not an uncommon one. Interestingly, it features strongly in one of the cases cited by the Respondent namely WIPO Case No. D2002-0256 concerning the domain name <boschuk.com>.

The dissenting panelist believes that this is what has happened here and concludes that no such use of a domain name can constitute use of the domain name “in connection with a bona fide offering of services” within the meaning of paragraph 4(c)(i) of the Policy nor can it constitute fair use within the meaning of paragraph 4(c)(iii) of the Policy. Paragraph 4 (c)(ii) of the Policy is inapplicable because there is no evidence that the Respondent is commonly known as Moon Palace/the Domain Name.

C. Registered and Used in Bad Faith

The minority view of the Panel is that the Respondent has no rights or legitimate interests in respect of the Domain Name. The basis for that decision is that the taking of the Complainant’s trade mark knowing it to be the Complainant’s trade mark, without the Complainant’s permission, for use, without adornment, as a domain name to be connected to a commercial web site is likely to lead to confusion of Internet users and cannot sensibly therefore give rise to any right or interest of the kind contemplated by paragraph 4(a)(ii) of the Policy.

By the same reasoning, the minority view of the Panel is that such a registration and use of the Domain Name constitutes bad faith registration and use of the Domain Name within the meaning of paragraph 4(b)(iv) of the Policy, which reads as follows:

“(b) Evidence of registration and use in bad faith.

For the purposes of Section 4(a)(iii), the following circumstances (in particular, but without limitation) will be evidence of the registration and use of a domain name in bad faith, if they are found by the Panel that will decide the dispute to be present:

(iv) By using the Domain Name, you have intentionally attempted to attract, for commercial gain, internet users to your web site or other online 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”.

In registering the Domain Name, the Respondent knew that it was the Complainant’s trade mark and selected it for the Domain Name precisely because it was the Complainant’s trade mark. The Respondent may not have been thinking in terms of trade marks at that time, but certainly the Respondent knew the name to be the name of the Complainant’s hotel.

The Respondent will have regarded the name as an attractive one because it precisely identifies the Complainant’s hotel. Anyone entering the name of the hotel into a search engine would be likely to find the Respondent’s site (connected to the Domain Name) high on the list. Many of those Internet users may not wonder or even care whether the site is an official site of the Complainant, but assuredly many will.

The minority view of the Panel is that the Respondent must have been aware of this when it registered the Domain Name. In the response, the Respondent stresses the fact that the web site makes it clear that the Respondent is not the Complainant, but the Panel visited the site and it is certainly not apparent from the home page. The home page is headed The Moon Palace and features information about all the Complainant’s family of hotels. There is no disclaimer. The detailed information about the Respondent is to be found elsewhere on the site. In any event, as indicated above, by the time one gets to the disclaimer the confusion has already occurred and the Respondent has obtained the business opportunity it might not otherwise have acquired.

In the Response, the Respondent contends that the Complainant has acquiesced to the Respondent’s use of the Domain Name. This was a point which exercised the Panel for a while. Why did the Complainant sit back and permit the Respondent to trade using the trading name “Moon Palace Vacations” and use the Domain Name as it has done? After all, it was, as the Respondent asserts, a business dependent for revenue on commissions paid by the Complainant to the Respondent. However, on examination of the papers, it is apparent that the Complainant had no reason to know of the Respondent or indeed the Respondent’s trading activity. It is plain from the correspondence exhibited to the Response that all the correspondence between the parties was, on the Respondent’s side, in the names of Collin and Ingrid Williams. The trading name Moon Palace Vacations and the Domain Name do not feature at all in that correspondence. Why was that the case? Why did the Respondent not ask that commissions be paid to it as Moon Palace Vacations? These are questions that call for answers in light of the Respondent’s assertion that the Complainant has acquiesced in the use by the Respondent of the Domain Name. If, as appears to be the case, the Complainant was not aware of any of this, how can it possibly be said that the Complainant has acquiesced?

The Panel is unable to hold that there has been any acquiescence still less any licence (implied or otherwise).

The minority view of the Panel is that the Domain Name was registered in bad faith and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. A significant proportion of Internet users will have believed that the web site connected to the Domain Name is the official web site of the Complainant. The Respondent will have derived commercial gain and the Respondent will have known that this was a likely result when registering the Domain Name.

Although the majority of the Panel agrees with much of the analysis stated, we conclude that this dispute involves matters outside the intended scope of the Policy. Respondent has for several years traded as Moon Palace Vacations, through the web site at “www.moonpalace.com”. During that period Respondent has sold millions of dollars worth of Complainant’s travel certificates, and has received over $1 million in commissions from Complainant, making it one of Complainant’s top outside sales agents. Under the circumstances, it is far from clear that Respondent’s activities represent actionable trademark infringement; at most this is an instance of a legitimate dispute over trademark rights, and therefore one that is not susceptible to adjudication under the UDRP. See Second Staff Report on Implementation Documents for the Uniform Domain Dispute Resolution Policy (October 24, 1999), “www.icann.org/udrp/udrp-second-staff-report-24oct99.htm”, 4.1(c) (noting that “the policy’s administrative dispute-resolution procedure does not extend to cases where a registered domain name is subject to a legitimate dispute (and may legitimately be found to violate the challenger’s trademark)”).

This does not appear to be a case of cybersquatting, where the domain name registrant’s business activities (to the extent that they exist at all) are merely a pretext designed to camouflage the registrant’s intent to exploit the trademark value of a domain name. Furthermore, there is a much broader dispute between the parties in this case, one that will not and cannot be resolved in this limited forum. Making an award here would do little more than afford a temporary tactical advantage to one of the parties in that ongoing dispute.

7. Reverse Domain Name Hijacking

While the Complaint has failed on a majority decision, the Panel has not found this an easy case to decide. The Panel is of the view that the Complainant had a reasonable, arguable case and that the filing of the Complaint was not an abuse of the system. The allegation of Reverse Domain Name Hijacking fails.

8. Decision

For all the foregoing reasons, the Complaint is denied.

Tony Willoughby
Presiding and dissenting Panelist

Mark Partridge
Panelist

David E. Sorkin
Panelist

Dated: December 5, 2003

No Comments

televisadeporte.com

December 2, 2003

Joel Gómez

2003, gTLD México

WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Grupo Televisa, S.A., Televisa, S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v. Party Night Inc., a/k/a Peter Carrington
Case No. D2003-0796

1. The Parties

Complainant is described in the Complaint as an international group of companies headed by Grupo Televisa, S.A., of Delegación Alvaro Obregón, México, and comprising numerous wholly owned subsidiaries including Televisa, S.A. de C.V., of Colonia Doctores, Mexico, Estrategia Televisa, S.A of Delegación Alvaro Obregón, México, and Videoserpel, Ltd., of Zug, Switzerland. The Complainant is represented by Leventhal Senter & Lerman PLLC, of Washington, D.C., United States of America.

Respondent is Party Night Inc., a/k/a Peter Carrington, of Amsterdam, Netherlands.

2. The Domain Name and Registrar

The disputed domain name <televisadeporte.com> is registered with Key-Systems GmbH dba domaindiscount24.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on October 8, 2003. On October 8, 2003, the Center transmitted by email to Key-Systems GmbH dba domaindiscount24.com a request for registrar verification in connection with the domain name at issue. On October 14, 2003, Key-Systems GmbH dba domaindiscount24.com transmitted by email to the Center its verification response confirming that Respondent is listed as the domain name holder and providing the contact details for the administrative, billing, and technical contacts. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on October 14, 2003. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 15, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was November 4, 2003. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 10, 2003.

The Center appointed Joan Clark as the sole panelist in this matter on November 19, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The domain name at issue was registered April 13, 2003.

Complainant relies upon the registered service marks for TELEVISA and TELEVISA and Design as well as the service mark TELEVISA DEPORTES.

Complainant has produced a copy of a Certificate of Registration of the service mark TELEVISA DEPORTES and Design, registered December 11, 1998, in the name of Televisa, S.A. de C.V., in association with educational, sportive, cultural and other activities.

Complainant has also produced copies of Certificates of registration, in the European Community, of the trade-mark TELEVISA registered December 15, 2000, and also TELEVISA and Design registered December 15, 2000, both registered in the name of Estrategia Televisa, S.A. de C.V., in association with numerous services including advertising, telecommunications, entertainment and computer services.

Complainant has also produced a copy of a Benelux registration dated June 25, 1992, of the mark TELEVISA registered in the name of Televisa, S.A. de C.V. for radio and television programs and other services.

The Complaint provides a list of 62 countries including the United States where it claims its service marks TELEVISA and TELEVISA and Design are registered. The Complaint limits documentary evidence of service mark registrations to production of copies of the registration certificates in the jurisdictions above described which include the Netherlands where Respondent is located according to information in the WHOIS database.

Complainant has filed a copy of a letter dated June 2, 2003, from Complainant’s solicitors addressed to Respondent claiming that Respondent’s registration and use of the domain name in dispute impinge on Complainant’s rights and calling upon Respondent to immediately cease all use of <televisadeporte.com> and to transfer all interest in the domain name to Complainant. The Complaint states that there was no response to this letter sent by email, and that the Federal Express package containing same was returned as undeliverable.

According to the Complaint, until recently, upon entering the <televisadeporte.com> domain name into the web browser, an internet user was routed to the “www.yes-yes-yes.com” website which contained numerous banner and pop-up advertisements and links to a variety of generic search topics with links to numerous commercial websites including pornographic websites.

The Complaint states that Peter Carrington/a/k/a Party Night Inc., has a history of purchasing domain name registrations that are misspellings of others’ websites or trade-marks and redirecting the domain names to pornographic and other commercial websites. The Complaint further states that Respondent is in fact a well-known cybersquatter who has been brought before National Arbitration Forum and WIPO Panels on at least fifty-six (56) prior occasions.

The Complaint further states that the contact information provided by Respondent to the Registrar is false and that attempts by Complainant’s counsel to contact Respondent using both the address and telephone number identified by the Registrar’s WHOIS information were fruitless, the address and telephone number provided by Respondent being that of the Jan Luyken Hotel in Amsterdam.

The Complaint further states that at the time of filing the Complaint, the domain name in dispute appeared to be inactive.

No response was filed by Respondent.

5. Parties’ Contentions

A. Complainant

Complainant, which describes itself as an international group of companies, declares it is an international media and entertainment company incorporated in Mexico since 1972, that it is the largest media company in the Spanish speaking world and a dominant figure in the international entertainment business. It is stated that Complainant produces the most Spanish language television programs and is believed to own the largest library of Spanish language television programming in the world which it broadcasts along with programs produced by others through its networks, its cable system and DTH satellite services in which it owns interests in Mexico, Latin America and Spain. Complainant states it is believed to be the leading publisher in the world of Spanish language magazines and is a major international distributor of those magazines and other periodicals, and further, that it engages in other businesses including radio production and broadcasting, professional sports and show business promotions.

The Complaint indicates that Complainant has registered its service marks for TELEVISA and/or TELEVISA and Design in sixty-two (62) countries worldwide, and that it has registered the service mark TELEVISA DEPORTES in Mexico, and the service marks for TELEVISA and TELEVISA and Design in the European Union and the service mark TELEVISA in Benelux.

The Complaint states that the first use of the TELEVISA mark occurred no later than January 31, 1973, and the first use in commerce occurred no later than August 31, 1976.

The Complaint sets forth details of the use of the TELEVISA and TELEVISA DEPORTES marks in conjunction with numerous sports related services, including the broadcast and promotion of sporting events in Mexico and the production of sports related television programming and the reporting of sports related news and statistics.

Complainant states that Respondent’s domain name <televisadeporte.com> is virtually identical and/or confusingly similar to Complainant’s registered service marks TELEVISA and TELEVISA DEPORTES.

The Complaint states that Respondent is not a licensee of Complainant, nor is Respondent authorized to use Complainant’s marks or any variation thereof in connection with any use.

Complainant urges that Respondent has no rights or legitimate interest in the domain name and further states that Respondent is not using the domain name or names corresponding to the domain name in connection with a bona fide offering of goods or services. Because of the fame associated with Complainant’s marks, their longstanding use and numerous trademark registrations, Complainant argues it is presumed that Respondent is not commonly known by the domain name as considered in the Policy, paragraph 4(c)(ii).

Complainant states that the use of the domain name confusingly similar to Complainant’s mark to attract Complainant’s customers to Respondent’s commercial pornographic websites is not considered to be a bona fide offering of goods or services pursuant to the Policy, paragraph 4(c)(i), or a legitimate non-commercial or fair use pursuant to the Policy, paragraph 4(c)(iii).

The Complaint states that Respondent’s objectives are clear, to divert internet users interested in Complainant’s established marks to Respondent’s commercially driven website and that such use tarnishes the goodwill associated with Complainant’s mark and frustrates internet users searching for Complainant’s services by confronting them with explicit and unanticipated content.

The Complaint states that Respondent’s activities are evidence of bad faith registration and use pursuant to the Policy, paragraph 4(b)(iv).

Complainant urges that because of the famous and distinctive nature of Complainant’s marks and the international presence and use of TELEVISA and TELEVISA DEPORTES, Respondent was on notice as to the existence of Complainant’s pre-existing rights in the marks.

The Complaint refers to a prior Complaint against Respondent for transfer of a domain name appropriating the TELEVISA mark to indicate that Respondent was clearly aware of the existence of this mark. Complainant also remarks that Respondent registered the domain name in dispute, <televisadeporte.com>, on April 13, 2003, less than two weeks after being formally notified by WIPO on March 31, 2003, of Complainant’s previous Complaint against Respondent concerning the TELEVISA mark and the <televisa.com> domain name.

Complainant refers to the decision in Grupo Televisa S.A. v. Party Night Inc. a/k/a Peter Carrington, WIPO Case No. D2003-0228 (May 21, 2003), in which the Panel found that Respondent had knowledge of Complainant’s TELEVISA mark.

Complainant also refers to “Respondent’s pattern of abusive domain name registration” as clear evidence of bad faith.

The Complaint requests the Administrative Panel to issue a decision that <televisadeporte.com> be transferred to Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, Complainant must prove each of the following in order that Respondent be required to submit to a mandatory administrative proceeding:

i. The domain name in issue is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

ii. Respondent has no rights or legitimate interests in respect of the domain name, and

iii. The domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for the purpose of paragraph 4(a)(iii) above, shall be evidence of the registration and use of a domain name in bad faith but are not limitative.

Paragraph 4(c) of the Policy sets out three illustrative circumstances each of which, if proven, shall demonstrate Respondent’s rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) above.

(i) Identity or confusing similarity to a trade-mark or service mark in which Complainant has rights

The Complaint relies upon service marks one of which, TELEVISA DEPORTES and Design, is registered in Mexico in the name of Televisa, S.A. de C.V. Other trade-marks on which Complainant relies are TELEVISA and TELEVISA and Design, registered in the name of Estrategia Televisa, S.A. de C.V. in the European Union and TELEVISA registered in Benelux in the name of Televisa, S.A. de C.V.

Televisa, S.A. de C.V. and Estrategia Televisa, S.A. de C.V. are stated in the Complaint to be wholly owned subsidiaries of Grupo Televisa, S.A. None of the service marks relied upon by Complainant is registered in the name of Grupo Televisa, S.A.

Paragraph 4(a)(i) of the Policy requires, as one element to be proved, that the domain name be identical or confusingly similar to a trademark or service mark in which Complainant has rights. These words do not require that Complainant be the owner of the mark and would include, for example, a licensee of the mark. It has been accepted in several decisions that a company related as subsidiary or parent to the registered holder of a mark may be considered to have rights in the mark. See for example Miele, Inc. v. Absolute Air Cleaners and Purifiers, WIPO Case No. D2000-0756 where Complainant’s grand-parent corporation had a long established U.S. trademark registration for the mark for vacuum cleaners. The decision reads in part:

“The Panel finds that Complainant, through its affiliation with its grandparent corporation which owns the trade-mark registration, has rights in and duties concerning the mark MIELE”.

The Policy does not require that Complainant have exclusive rights in the trade-mark or service mark – see Smart Design LLC v. Carolyn Hughes, WIPO Case No. D2000-0993 in which the Panel stated:

“It is also abundantly clear from the evidence filed by Respondent that there are literally dozens of other entities trading under and by reference to precisely the same name”

and concluded:

“In this Panel’s view the test under paragraph 4(a)(i) of the Policy, which makes no mention of “exclusive rights” is or ought to be a relatively easy test for a Complainant to satisfy, its purpose simply being to ensure that Complainant has a bona fide basis for making the Complaint in the first place”.

Televisa, S.A. de C.V. and Estrategia Televisa, S.A. de C.V. each have the necessary interest, that is rights in the service marks in question, to file this Complaint. However, the Complaint is stated to be filed by the international group of companies headed by Grupo Televisa, S.A. and including the other companies registrants of the service marks in question, which are said to be wholly owned subsidiaries of Grupo Televisa, S.A. Although no documentary evidence was produced with regard to the parent subsidiary relationship, the Panel accepts this statement which is certified in the Complaint to be accurate.

The Panel concludes that Grupo Televisa, S.A. has rights in the service marks in question which are registered by its wholly owned subsidiaries. Such appears also to have been the conclusion of the Panel in two other decisions, although these contain no discussion on this point. (See Grupo Televisa, S.A. et al. v. Joel F. Gonzalez, WIPO Case No. DTV2002-0001; Grupo Televisa, S.A. v. Party Night, Inc., a/k/a Peter Carrington, WIPO Case No. D2003-0228).

The Panel finds that the disputed domain name <televisadeporte.com> is confusingly similar to the service marks TELEVISA and TELEVISA and Design, registered service marks of a subsidiary of Grupo Televisa, S.A., the first and prominent part of the domain name being identical to TELEVISA.

As found in numerous decisions, the suffix referring to the top-level domain such as “.com” should not be taken into consideration in determining the identity or confusing similarity of a domain name to a trade mark or service mark.

The disputed domain name <televisadeporte.com> is almost identical to the words in the registered service mark TELEVISA DEPORTES and Design registered by another subsidiary of Grupo Televisa, S.A., except that in the domain name there is no space between “televisa” and “deporte” and the “s” at the end of TELEVISA DEPORTES is missing in the domain name. The Panel finds that the disputed domain name is clearly confusingly similar to the service mark TELEVISA DEPORTES and Design.

The first condition required to be satisfied under paragraph 6(i) above is therefore fulfilled.

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

The Complaint states that Respondent is not a licensee of Complainant nor is he authorized to use Complainant’s marks in any way. No response having been filed, no evidence or argument has been put forward by Respondent to demonstrate any rights or legitimate interests he may have in the domain name. Indeed, it would appear that it would be difficult for Respondent to make such assertions since there is no indication in the materials submitted by Complainant that Respondent has used the domain name in connection with a bona fide offering of goods and services, the domain name having been registered and used by Respondent in bad faith, as found by the Panel under (iii) below. Nor is there any indication that Respondent has been commonly known by the domain name. Nor would it appear that it could be established that Respondent is making a legitimate non-commercial or fair use of the domain name without intent for commercial game.

The Panel therefore concludes that the second condition under paragraph 6(ii) above, that Respondent has no rights or legitimate interests in respect of the domain name, has been fulfilled.

(iii) The domain name has been registered and is being used in bad faith.

Complainant has submitted ample evidence and argument to support the conclusion that the registration of the disputed domain name was made in bad faith. This follows in part from the renown and long usage of the registered service marks on which Complainant relies. The Panel finds on the balance of probabilities that Respondent was aware of the existence and renown of the service mark TELEVISA DEPORTES and Design and indeed had been formally notified by WIPO of Complainant’s previous Complaint against Respondent concerning the TELEVISA mark, less than two weeks before Respondent filed the domain name in dispute in this case.

The Panel also notes, as an element indicating bad faith, the false contact information provided by Respondent to the Registrar with which the disputed domain name is registered.

The Panel has no hesitation in finding that the disputed domain name was registered in bad faith.

The use which Respondent appears to have made of the disputed domain name is to have arranged that, until recently, upon entering the <televisadeporte.com> domain name into the web browser, an internet user was routed to other websites including pornographic websites with no use or reference to Complainant or any of its services. Such use of the domain name is also clearly in bad faith following as it does upon registration in bad faith.

The Panel therefore concludes that Respondent has both registered and used the disputed domain name in bad faith and the third condition required to be satisfied under paragraph 6(iii) has been fulfilled.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <televisadeporte.com> be transferred to Complainant Grupo Televisa, S.A.

Joan Clark
Sole Panelist

Dated: December 2, 2003

No Comments

esmasmusica.com y telvisa.com

May 21, 2003

Joel Gómez

2003, gTLD México

WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Grupo Televisa, S.A. v. Party Night Inc., a/k/a Peter Carrington
Case No. D2003-0228

1. The Parties

The Complainant is Grupo Televisa, S.A., Zedec Santa Fé, Delegación Alvaro Obregón, México, D.F. 01210, of Mexico, represented by Leventhal, Senter and Lerman, PLLC of United States of America.

The Respondent is Party Night Inc., a/k/a Peter Carrington, Amsterdam, Netherlands.

2. The Domain Names and Registrar

The disputed domain names <esmasmusica.com> and <telvisa.com> are registered with Key-Systems GmbH dba domaindiscount24.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on March 21, 2003. On March 24, 2003, the Center transmitted by email to Key-Systems GmbH dba domaindiscount24.com a request for registrar verification in connection with the Domain Names at issue. On March 26, 2003, Key-Systems GmbH dba domaindiscount24.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the ”Supplemental Rules”).

In accordance with the Rules, Paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 31, 2003. In accordance with the Rules, Paragraph 5(a), the due date for Response was April 20, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 30, 2003.

The Center appointed Brigitte Joppich as the sole panelist in this matter on May 9, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, Paragraph 7.

4. Factual Background

The Complainant is an international media and entertainment company incorporated in Mexico since 1972. The Complainant is the largest media company in the Spanish-speaking world and a dominant figure in the international entertainment business. The Complainant produces the most Spanish-language television programs (50,000 hours in 2001) and is believed to own the largest library of Spanish-language television programming in the world. The Complainant also engages in other businesses, including radio production and broadcasting, professional sports and show business promotions, paging services, feature film production and distribution, dubbing, and a major Spanish-language Internet portal, EsMas.com. In 2001, Complainant’s net sales totaled over 2 billion U.S. dollars.

The Complainant has registered several service marks for TELEVISA and TELEVISA & Design (the “TELEVISA marks”) in sixty-one countries worldwide, primarily in International Classes 38 and 41, there under several marks in important countries as Australia, Germany, the UK, the US, and Community Trademarks in the European Community. The first usage of the trade mark TELEVISA was on January 31, 1973; the first use in commerce occurred no later than August 31, 1976.

Complainant has further registered several service marks for ESMAS and ESMAS & Design (the “ESMAS marks”) in sixty countries worldwide, primarily in International Classes 35, 38 and 42, there under also several registrations in the above mentioned important countries. The first usage of the trade mark ESMAS was on April 16, 2000; the first use in commerce occurred no later than May 31, 2000. The ESMAS marks are used in conjunction with music-related services.

The Respondent has not provided the Panel with any information about his business or his person. The Respondent has registered the Domain Names <telvisa.com> and <esmasmusica.com> on November 24, 2002, and November 17, 2002, respectively.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in Paragraph 4(a) of the Policy are given in the present case, i.e.

(i) the Domain Names are identical or confusingly similar to the TELEVISA and ESMAS marks;

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names:

- the Respondent is not a licensee of the Complainant, the Domain Names can neither be derived from the Respondent’s personal name nor the name or the nature of the business operated by him and the Respondent is not commonly known by either of the Domain Names;

- the Respondent has furthermore no rights to or legitimate interests in the Domain Names as the registration of a Domain Name is not, by itself, sufficient to establish such rights or interests;

- the Domain Names were not used in connection with a bona fide offering of goods and services nor in any legitimate non-commercial or fair content as the Respondent’s practices include linking to pornographic websites, thus tarnishing the Complainant’s service marks;

(iii) the Domain Names were registered and being used by the Respondent in bad faith:

- the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s marks;

- concerning the domain <telvisa.com>, the Respondent has shown the behavior of typo squatting by registering a simply misspelled version of the Complainant’s TELEVISA marks;

- bad faith is also displayed by the Respondent’s usage of the disputed Domain Names linked to pornographic and gambling websites thus tarnishing the Complainant’s marks and attempting to profit from the illegitimate relationship;

- the Respondent has further registered the disputed Domain Names in at least constructive knowledge of the Complainant’s famous TELEVISA and ESMAS marks;

- the Respondent engaged in a pattern of abusive domain name registration, he has lost at least 29 complaints under the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Under Paragraph 4(a) of the Policy the Complainant must prove that each of the following three elements are present:

(i) the Domain Names are identical or confusingly similar to the Complainant’s service marks;
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Complainant owns rights in the TELEVISA and ESMAS marks which have not been denied by the Respondent.

- <telvisa.com>

The domain name <telvisa> under the TLD <.com> differs from the Complainant’s TELEVISA marks merely by the omission of the second letter “e” as the TLD is of no consequence for establishing the identity or confusing similarity between the Domain Name and the Complainant’s service marks. The Panel finds these words to be confusingly similar in respect of their visual and phonetic attributes. Furthermore, the overall impression of the Complainant’s TELEVISA marks is not significantly changed by the omission of the second letter “e”. Therefore, Respondent’s domain name <telvisa.com> is confusingly similar to Complainant’s TELEVISA marks.

- <esmasmusica.com>.

As to <esmasmusica.com> the TLD can again be left aside. The name “esmasmusica” fully incorporates the distinctive part of the Complainant’s ESMAS marks and merely adds the descriptive term “musica” (Spanish for “music”). Domain names created by using a third party’s trade mark and merely adding a generic word or term are in most cases confusingly similar. The fact, that the Complainant is engaged in radio production and broadcasting in Spanish language and uses the ESMAS marks in conjunction with music-related services only confirms this rule. The domain name <esmasmusica.com> is therefore confusingly similar to the Complainant’s ESMAS marks.

The Complainant has satisfied the requirements of Paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if proved by the Respondent, shall demonstrate his rights to or legitimate interests in the Domain Names for purposes of Paragraph 4(a)(ii) of the Policy, i.e.

(i) before any notice to the Respondent of the dispute, the use by the Respondent of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business or other organization) has been commonly known by the Domain Names, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert customers or to tarnish the service marks at issue.

The Domain Names can neither be derived from the Respondent’s personal name nor the name or the nature of the business operated by him, nor is the Respondent commonly known by either of the Domain Names, which were not used in connection with a bona fide offering of goods and services nor in any legitimate non-commercial or fair content. The Panel therefore sees no rights of the Respondent to or legitimate interests in the Domain Names and finds that the Complainant has also satisfied the requirements of Paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which for purposes of Paragraph 4(a)(iii) of the Policy shall be evidence of the registration and use of the Domain Name in bad faith, including

(ii) where the Respondent has registered the Domain Name in order to prevent the Complainant as owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) where the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) where, by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his 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 his web site or location or of a product or service on his web site or location.

The Respondent registered both of the Domain Names in 2002, i.e. at a time when the Complainant enjoyed rights in the TELEVISA and ESMA marks in numerous territories, including the Netherlands, the alleged residence of the Respondent. The mere fact of the registration of two domain names within one week, which are confusingly similar to the Complainant’s TELEVISA and ESMAS marks respectively, is sufficient evidence that he knew of third party’s rights in these marks. Taking into account the pattern of abusive domain name registration the Respondent has engaged in the past, the Panel finds that the Domains Names were registered in bad faith.

Furthermore, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its pornographic websites, by linking them to the misleading Domain Names, thus creating confusion and tarnishing the Complainant’s goodwill in its service marks. The Panel finds that this constitutes bad faith usage of the Domain Names.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <telvisa.com> and <esmasmusica.com> be transferred to the Complainant.

Brigitte Joppich
Sole Panelist

Dated: May 21, 2003

No Comments

navision.com.mx

April 4, 2003

Joel Gómez

2003, Roberto Bianchi, ccTLD México

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Microsoft Business Solutions ApS v. Frederick Haught

Case No. DMX2003-0002

The Complainant is Microsoft Business Solutions ApS, Frydenlunds Allé 6, 2950 Vedbæk, Denmark, represented in this proceeding by Mr. Knud Wallberg, Attorney-at-law, of Sandel, Løje & Wallberg, Frederiksgade 7, PO Box 9006, DK-1265 Copenhagen, Denmark. The Respondent is Mr. Frederick Haught, with address at 12914 Frances, CP 77477, Stafford, Texas, United States of America, represented in this proceeding by Mr. Bradford W. Irelan, Esq., of Irelan & Hargis, P.L.L.C., 440 Louisiana, Suite 1800, Houston, Texas 77002, United States of America.

The domain name at issue is <navision.com.mx>, registered in the name of Respondent with NIC-Mexico, of Monterrey, N.L., Mexico.

On February 13 and 17, 2003, the complaint was submitted per e-mail and hardcopy, respectively. On February 14, 2003, the Center acknowledged receipt of the complaint, and requested confirmation of registration data to the concerned registrar. On the same day NIC-Mexico replied to the Center’s request, and confirmed that the domain name at issue had been registered on Respondent’s name on January 22, 2002. On February 19, 2003, the Center notified the complaint and the commencement of the proceeding to the Respondent. On March 12 and 14, 2003, Respondent submitted its response to the Center per e-mail and hardcopy, respectively. On March 18, 2002, after receiving the corresponding Statement of Acceptance and Declaration of Impartiality and Independence, the Center appointed Roberto A. Bianchi as sole panelist. On March 27, 2003, the Panel issued Procedural Order No. 1, by which it declared the closure of the proceeding, and decided that the proceeding shall be conducted in English, pursuant to Rules, Articles 16 and 21.

The following facts and circumstances are found to be true:

By submitting two certificates issued by Instituto Mexicano de la Propiedad Industrial of April 28, 2000, Complainant has evidenced that NAVISION SOFTWARE A/S holds Mexican registrations for the “NAVISION” trademark in class 9 (covering software, including recorded software) and for the “NAVISION” service mark in class 42 (covering software services for software production, software design services, etc.), both valid for ten years since the presentation date of January 18, 2000. Annex 4 to the complaint. NAVISION A/S is also the trademark holder of over 200 “NAVISION” marks in multiple countries, for the 9, 42 and some other classes. Annex 6 to the complaint. By submitting a certificate of September 11, 2002, issued by Ehrvers- og Selskabsstyrelsen – Erhvervsministeriet, Complainant has shown that as per the records of the Danish Commerce and Companies Agency the present name of NAVISION SOFTWARE A/S and NAVISION A/S is “Microsoft Business Solutions ApS”. Annex 3 to the complaint.

Respondent has not contested that Complainant has rights in the NAVISION marks. Due to the change of the company name of the original trademark holder, Complainant has rights in the marks “NAVISION”, whose registrations predate the domain name registration of January 22, 2002, in Respondent’s name. Apparently the domain name may have been registered before such date, but neither Complainant nor Respondent has elaborated on when and in whose name such previous registration was effected. See emails of August 30, 1999, from Mr. Haught to Mr. Kuhner and Mr. Quellhorst of NFS, and of November 16, 1999, from NIC-Mexico to Mr. Haught and Mr. Kuhner, of Team 1, Inc. Annexes 15 and 16 to the response.

Complainant contends the following:

- The contested domain name <navision.com.mx> is identical to Complainant’s trademark except for the addition of the first and second level designations “.com.mx”, which should be disregarded in this context.

- The Respondent was previously engaged in a company in Texas that was recognized as a Navision Solution Center in US by Complainant.

- To be recognized as a Navision Solution Center does however not give neither the company nor owners or employees any rights to register the trademark NAVISION as part of any type of business identifier including as a domain name. Any such registration is actually in breach of the Solution Center Agreement. The specific registration of the contested domain name has not been endorsed or accepted by Complainant.

- There is no evidence of the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services, before any notice to the Respondent of the dispute. Respondent (as an individual, business, or other organization) has not been commonly known by the domain name and is not making a legitimate non-commercial or fair use of the domain name.

- Respondent was fully aware of Complainants right to the trademark NAVISION when he registered the contested domain name. Complainant has tried to get respondent to transfer the domain name voluntarily to them, but without success. By denying to do so Respondent knowingly and therefore intentionally prevents Complainant from reflecting the mark NAVISION in a corresponding domain name.

- At present the domain name is actively in use. The corresponding website “www.navision.com.mx” shows a standard place holder page with no specific content. This may lead Internet users to the belief that Complainant is not presently active on the Mexican market. This is untrue and is thus likely to disrupt the business of Complainant.

Respondent contends the following:

- Frederick Haught was the owner of Networked Financial Systems (hereinafter NFS) in Houston, Texas. NFS became a Navision Solutions Center in 1997, but did not execute the Solution Center Agreement attached to Complainant’s Complaint. Located in Texas, and already doing business in Latin America for many years, NFS actively began to market, sell and support Navision products in Latin America, and particularly, Mexico in 1997. From 1998 through 2000, NFS developed a uniquely Mexican Spanish version of the Navision product localized for the Mexican market. This new product, developed by NFS at its sole expense, incorporated the accounting and financial rules of the Republic of Mexico. Mr. Haught conducted seminars and conferences as part of an extensive marketing campaign throughout Mexico. Ultimately, his company developed numerous successful client relations with various Mexican corporations, and international companies with operations in Mexico. Moreover, NFS succeeded in developing at the specific referral or invitation of Navision Software, or Navision Software US, numerous customers in Mexico. Navision wholly supported NFS’ work in the Mexican market. NFS’ presence in the Mexican market became so significant that it developed a website under the domain name of <navision.com.mx> for prospective clients to find it and for existing customers to contact the company. Haught was the administrator for the domain name from the inception. Navision knowingly supported its software sold by NFS to Mexican clients. NFS developed various marketing and sales collateral materials identifying its business development activities and ongoing product sales and service activity in Mexico, with specific reference to the “www.navision.com.mx” website. Navision knew about, received and accepted these marketing materials. Demonstrations of the website in Spanish from the domain name <navision.com.mx> were made to hundreds of Navision officers, shareholders, managers, and agents (NSC’s) at several events held in 1999 and 2000.

- NFS’s activities were undertaken with the full knowledge and consent of Navision. In fact, Navision management, including corporate officers, met with Mr. Haught for the express purpose of discussing NFS’ marketing activities and presence in the Mexican market. Navision supported NFS’s marketing objectives in Latin America, and particularly Mexico. Several officers and employees who knowingly participated in NFS’ marketing program for Mexico. Mr. Haught had extensive discussions with Soren Fink Jensen in the autumn of 1998 and again proceeding and during the Navision World Conference in the spring of 1999 concerning NFS’s penetration of the Mexican market. NFS presented the Mexican version of the Navision software to Navision at the Navision World Conference in April of 1999, and demonstrated the website to Soren Fink Jensen and Rene Stockner of Navision. Many of the officers and members of Navision management encouraged Mr. Haught to continue developing business in Mexico because, at that time, Navision had no other representatives adequately servicing the Mexican market. While Navision declined to expand into the Mexican market at that time, Navision expressed its appreciation of his expansion into the Mexican market and further encouraged him to continue doing so. Haught on behalf of NFS re-registered the domain name in November of 1999. Navision referred clients, such as Maersk NTR to NFS for the Mexican add on.

- NFS closed its business operations in October of 2000, for reasons unrelated to Latin American sales. Mr. Haught retained the domain name, <navision.com.mx>, since that time with the intent and hope of restoring his Latin American business for Navision. Haught expended, through NFS, substantial resources to develop the Mexican market, and the corresponding domain name at issue in this proceeding. Navision neither compensated Haught for the costs of development of the domain nor the business in Mexico. Complainant takes the peculiar position that Respondent registered and used the domain name in bad faith because “Respondent was fully aware of Complainant’s right to the trademark Navision when he registered the contested domain name.” Mere use of the Navision name, however, fails to constitute bad faith. As demonstrated above, Respondent did not register or acquire the domain name “primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complaint who is the owner of the trademark or service mark…..” Rather, the domain name was acquired by Mr. Haught in connection with his business activities as a Navision Solutions Center with full knowledge and consent of Navision. Mr. Haught likewise has not registered the domain name in order to prevent Navision from “reflecting the mark in a corresponding domain name.” Mr. Haught has taken no action whatsoever to prevent Navision from using its trademark, which it does in a different domain name. Mr. Haught has not registered the domain name primarily for the purposes of disrupting the business of Navision. Mr. Haught is not actively competing with Navision nor has he used the <navision.com.mx> domain name to interfere with the business of Navision.

- Mr. Haught has not used the domain name with the intent to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of his website. As Complainant has acknowledged, the website is not currently in active use. Thus, Mr. Haught does not use and has not used the domain for any illicit or improper effort to cause confusion with Navision customers.

The Panel finds that the domain name is identical to Complainant’s marks NAVISION. The addition of “.com.mx” in the domain name is irrelevant. See WIPO Case No. D2000-0075 InfoSpace.com, Inc. v. Tenenbaum Ofer, April 27, 2000, finding that “(t)he addition of a hyphen and “.com” are not distinguishing features”. In sum, Complainant has proved the requirement of “Política”, Paragraph 1,a,i.

Respondent has been engaged in or was a shareholder of Networked Financial Systems, Inc. (”NFS”), a company in Houston, Texas, that was recognized as a Navision Solution Center. Complainant contends that a Navision Solution Center, or its owners or employees, have no rights to register the trademark as part of any type of business identifier, including a domain name. Complainant relies on an un-signed and un-dated copy of a Navision Solution Center agreement. It contends that the registration of the domain name <navision.com.mx> was a material breach of such agreement. Respondent contends that it has not executed such agreement, which was drafted after NFS had been recognized as a Navision Solution Center, and even after NFS had ceased business. The copyright date of the agreement is October 2001. Annex 7 to the complaint.

It appears that NFS as a Navision Solution Center independently and at its own risk developed a Spanish version of the Navision Financials software, including an adaptation to Mexican accounting standards under Mexican law. NFS expected to become a distributor of Navision products and services for Mexico. Whatever the reasons such expectation did not become a reality.

A discussion about the business relationship between a Navision Solution Center and Complainant or Complainant´s predecessors in name, and the corresponding rights and duties of the parties, is beyond the scope of this domain name dispute, except to the extent strictly necessary to determine whether Respondent had rights in the domain name under the “Política”. The Parties have not elaborated about the actual content of those rights and duties. Absent an executed agreement or other evidence, this Panel cannot examine such matter further, an issue that should eventually be better dealt with before a court with jurisdiction.

Respondent contends that NFS developed marketing and other materials identifying its business development activities and ongoing product sales and service activity in Mexico “with specific reference to the www.navision.com.mx website”, and that “Navision knew about, received and accepted these marketing material”. In support of such contention Respondent shows a hardcopy of a message sent to several persons all of them affiliated with NFS. Annex 16 of the response. The message’s subject is <navision.com.mx>. However none of the recipients are affiliated with Complainant or its predecessors in name. Annex 21 is an email from Ms. Susana Zumaya to Mr. Haught. No reference is made in this email to the “www.navision.com.mx” website. Annex 17 is a copy of an email from Mr. Benno Richter of Balzers company to Mr. Segarra of NFS. There is no reference to the domain name either. In fact the Panel could not find any fact or material in this record supporting Respondent’s contention that Complainant or its predecessors consented, accepted or acquiesced the fact of the registration of <navision.com.mx> in Respondent’s name.

The domain name was registered in Mr. Haught’s name in January 2002. On June 19, 2002, Mr. Wallberg representing Navision A/S sent a letter to Mr. Haught concerning his registration of <navision.com.mx>, stating that such registration had not been authorized by the trademark’s holder, and requesting Mr. Haught to transfer the domain name to Mr. Wallberg’s client for a compensation of the registration expenses. In its reply of July 12, 2002, Mr. Irelan representing Mr. Haught stated that his client was a shareholder and officer in a company that became a Navision Solution Center in 1997, and that NFS requested Navision to allow the company to be the distributor of Navision products in Mexico. Mr. Irelan adds that Navision declined to expand to Mexico, that Mr. Haught´s company closed operations in October of 2000, and that Mr. Haught has retained the domain name <navision.com.mx> since the firm ceased doing business, with the intent and hope of rejuvenating his Latin American business for Navision.

The Panel believes that the independent development by NSF of an Spanish version of the Navision software does not by itself confer Respondent rights in the domain name.

As for future use of the domain name, according to Mr. Irelan’s letter to Mr. Wallberg, NFS closed operations in October of 2000. The domain name registration was made in January 2002. Mr. Haught appears as to presently having “the intent and hope of rejuvenating his Latin American business for Navision”. Política, Paragraph 1,c,i requires that preparations for a future use are “demonstrable”, i.e. elements must be present that allow to reasonably infer that a future use is intended. Respondent has not presented the Panel with any such elements of an intended future use.

As for the present use of the domain name, the corresponding website consists of just a web page under a title reading “Welcome to the website of “www.tulum1.com”, and some instructions about how to upload web content to a web server. There is no reference to Complainant’s products or services. Annex 12 to the complaint. Furthermore, as seen by the Panel on April 3, 2003, by using its browser, the “www.tulum1.com” site is currently “under construction”, and no conclusions can be drawn about its nature. The actual content of Respondent’s web page does not allow to conclude that Respondent is presently selling Complainant’s goods or services under Complainant’s registered trademark, or that Respondent’s web page reproduces Complainant’s mark, or that Respondent tries to show that it is associated with Complainant, or that he is stating that it is Complainant’s distributor, and thus, that it is using the domain name in connection with a bona fide offering of Complainant’s goods or service. See WIPO Case No. D2000-0187 Weber-Stephen Products Co. v. Armitage Hardware, May 11, 2000, section 6-B, where a panel found in favor of respondent Armitage.

As relates past use of the domain name, it is undisputed that before having received a notice of the dispute Mr. Haught and NFS had full knowledge that the NAVISION mark belonged to Complainant or to its predecessors in name. As NFS and Mr. Haught conducted their business as a “Navision Solution Center”, it is highly unlikely that “Navision” as a name corresponding to the domain name was used in connection with a bona fide offering of services.

It is true that the hardcopy of an email sent on February 4, 1999, by Mr. Haught to Mr. Fink-Jensen of Navision at sfj@navision.com shows several attached Word files with a description (in Spanish) of “Navision Financials para Latino América” (”vista del producto”, “mayor general”, “ventas y cobros”). Annex 1 to the response. On each page of the attachments there is a footer reading “Networked Financial Systems, Inc. “http://www.navision.com.mx” Teléfono en Houston 281-447-0070″. The response has been certified as required by Rules Article 5,b,viii. Response, chapter VII. Considering that the certification covers the Annexes to the response the Panel admits such evidence within the limited scope of these proceedings. However, no consent, acceptance or acquiescence by Complainant of the use of the disputed domain name can be inferred from the record. The email of 2-4-99 and the rest of the evidence presented by Respondent, lead the Panel to find that, in developing the Spanish version and adaptation of the Navision software and offering it to prospective customers, partners or other Navision Solution Centers, Respondent was acting on its own risk, and that directly or through NFS has not used the “Navision” name in connection with a bona fide offering of software and consulting services.

Accordingly the Panel finds that Respondent has no rights or legitimate interests in the domain name (”Política”, Paragraphs 1,a,iii and 1,c,i).

Complainant contends that Respondent 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. Respondent denies this, arguing that Complainant has registered its mark under another “navision” .com.mx domain name.

Paragraph 1,b,ii, of the “Política” can be translated from Spanish into English as follows:

“the domain name has been registered in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct”.

Complainant does not contend or prove that Mr. Haught has “engaged in a pattern of such conduct”. This wording is usually construed by panels as meaning the registration by a respondent of several other (usually more than two) domain names reflecting trademarks belonging to third parties with a similar purpose. There are no elements on the record showing that Mr. Haught has previously or presently engaged in any such registrations.

However this Panel believes that even in the absence of “a pattern of such conduct” a registration with a purpose of preventing a trademark´s holder to reflect its mark in a corresponding domain name could still be alleged to be a registration in bad faith if other circumstances of bad faith are present.

In fact Complainant contends that the present content of the “www.navision.com.mx” website can lead Internet users to believe that Complainant is not presently active on the Mexican market, and that such belief is likely to disrupt the business of Complainant.

The Panel believes that the present use of the domain name does not bear any relation to an offer to sell NAVISION products or to provide NAVISION-related services. The corresponding web page consists of a text absolutely devoid of any offering of products or services, except for some very basic instructions about how to upload content to any website. This Panel is satisfied from this fact that an average Internet user can infer that Complainant is not presently active on the Mexican market, an that such fact may likely result in a disruption of the business of Complainant.

The Panel finds that Complainant has met its burden under “Política”, Paragraph 1,a,iii, in that it proved that the domain name at issue has been registered and is being used in bad faith.

The Panel finds that domain name at issue is identical to Complainant’s NAVISION marks, that Complainant proved that Respondent has no rights or legitimate interests in the domain name, and that Respondent has registered and is using the domain name in bad faith.

For the above reasons, the Administrative Panel requires that the <navision.com.mx> domain name registration be transferred from Respondent to Complainant.

Roberto A. Bianchi
Sole Panelist

Dated: April 4, 2003

No Comments

2003, ccTLD

parfarm.com

April 1, 2003

Joel Gómez

2003, Kiyoshi Tsuru, gTLD México

WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Parfarm, S.A. v. Braco International, S.A. de C.V.
Case No. D2003-0080

1. The Parties

The Complainant is Parfarm, Colonia Alamos, Mexico, represented by Jesús Hernández Chávez of Mexico.

The Respondent is Braco International, S.A. de C.V., C/O Bravo Berentsen, Mauricio, Laboratorios Brovel, S.A. de C.V., Estado de México, Mexico.

2. The Domain Name and Registrar

The disputed domain name<parfarm.com> is registered with Network Solutions, Inc. Registrar.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on February 3, 2003. On February 6, 2003, the Center transmitted by email to Network Solutions, Inc. Registrar a request for registrar verification in connection with the domain name at issue. On February 7, 2003, Network Solutions, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 13, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was March 5, 2003. The Response was filed with the Center on March 5, 2003.

The Center appointed Kiyoshi I. Tsuru as the Sole Panelist in this matter on March 12, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The trademark PARFARM has been registered in Mexico by Complainant on October 26, 1968. The said registration, which has been duly renewed before the Mexican Institute of Industrial Property, grants Complainant the exclusive right to use such trademark as of April 22, 1968.

The disputed domain name was registered by Respondent on September 28, 1999.

5. Parties’ Contentions

A. Complainant

Confusing Similarity

Complainant argues that the domain name <parfarm.com> is identical to its registered trademark PARFARM, except for the top-level domain name marker “com”; that the said gTLD is not a distinctive element but just the superior level of a domain name identifier.

Respondent’s lack of rights or legitimate interests in respect of the domain name

Complainant asserts that it has the exclusive right to use the trademark PARFARM in any form of letter or type of print, and that Respondent has no rights to the said trademark.

Bad faith registration and use

Complainant states that the disputed domain name resolves to a Web site located at “www.tornel.com,” which is the site of a competitor of Complainant, i.e., Laboratorios Tornel, S.A.

Complainant also argues that its commercial activities have been seriously disturbed due to the confusion generated within Complainant’s clients; that such clients may think that a possible merger or acquisition had taken place, involving Complainant’s business and its competition.

Complainant continues by saying that the foregoing situation has generated several expenses in an effort to provide its clients with explanations regarding this issue.

B. Respondent

Confusing Similarity

Respondent states that according to domestic (Mexican) and international intellectual property law, only trademarks that are properly registered can be deemed as reserved or protected outside its domestic country. In this case, as stated by the Complainant, PARFARM is a registered trademark only in Mexico and the effects of such registration are limited to the country and also to the specific products or services covered by the same.

Respondent also argues that in light of Complainant’s lack of registration of PARFARM within the period of time (6 months) established by the Paris Convention for the Protection of Industrial Property in any other country that is party of such treaty, it can be concluded that Complainant does not have any right (i) over the domain name in dispute, (ii) over the PARFARM trademark outside Mexico and (iii) over the PARFARM trademark inside Mexico, for products and/or services other than the ones specifically registered and granted by the appropriate authorities (classes 1, 3 and 5, that is, pharmaceutical, veterinarian and hygienic products for medical use).

In Respondent’s view, the disputed domain name is not identical to the Complainant’s registered trademark because (i) it is clearly identified and used as an internet address and not a trademark, and (ii) the PARFARM trademark registered by the Complainant is aimed, exclusively, to Mexican territory, while the domain in dispute is clearly an international/worldwide address not linked to any specific country. If arguments like the one sought by Complainant had merits, trademarks like “Coca Cola,” “Dr. Pepper” or “Havana Club” would have never existed, due to the previous existence or use somewhere of a trademark or commercial name bearing such words.

Respondent’s rights or legitimate interests in respect of the domain name

Respondent alleges that Complainant does not have any right over the PARFARM word, other than the trademark protection that was obtained for use inside Mexico and exclusively with respect to three “classes” of products and/or services.

According to Respondent, the disputed domain name is international and its use was obtained outside Mexico. Respondent states that such domain is not aimed exclusively for the Mexican territory or market; that the disputed domain name does not integrate the letters “mx” at its end, as most of the Mexican companies’ domains in the Web do.

Respondent asserts that he does not need to obtain any authorization from Complainant in order to use <parfarm.com> as a domain name, that Respondent’s legitimate right over the domain derives from its acquisition/registration since September 28, 1999, and its compliance with the agreement executed with Network Solutions, Inc. since such date. Respondent argues that it has never used the word “parfarm” as a trademark or trade name in Mexican territory.

Bad faith registration and use

Respondent asserts that it has never approached anybody, including Complainant, seeking to obtain profits from the transfer of the disputed domain name.

Respondent argues that it has, instead, maintained the disputed domain name as part of an integral commercial plan in the agricultural sector, which will be aimed at farm owners.

Respondent claims to be the registrant of several domain names such as <alebrige.com>, <parfarm.com> and <tornel.com>, which Respondent claims to use and/or allegedly plans to use commercially.

Respondent argues that it is not a parent, subsidiary nor affiliate corporation of Laboratorios Tornel, S.A., but that it is engaged in a commercial relationship with this company and Semillas Beretnsen, S.A. de C.V.

Respondent states that the idea of using the domain name “www.parfarm.com” comes from abbreviating Panamerican Farm Products which will be the name of the joint venture between Respondent and the two above mentioned companies; that such a joint venture would have operations within the Middle East, Caribbean, and Central and Southern American markets.

Respondent alleges that that the temporal link of the disputed domain name <parfarm.com> to “www.tornel.com” was a programming error of Respondent that has been duly corrected.

Respondent also argues that Complainant has not submitted any evidence showing the existence of a “serious disturbance” generated within its clients. Respondent claims to have registered the disputed domain name without knowing of any problem caused to third parties, derived from its use.

In the opinion of Respondent, Complainant has not proved the existence of the alleged expenses generated by the use of the disputed domain name by Respondent, and that it would seem extremely unlikely that Complainant’s clients had been confused by this international domain while (i) Complainant has not even established any internet facility to attend such clients and (ii) Respondent has never used the trademark registered by Complainant within Mexican territory.

Respondent asserts that Complainant has recently realized the convenience of setting up a Web page of its own, trying to undermine Respondent’s lawful rights over its domain name acquired several years ago, claiming some sort of international trademark protection that, as evidenced before, does not exist.

Respondent points out that the domain name <parfarm.com.mx> is not registered by Respondent and suggests that such a name would be more adequate for Complainant given the fact that its commercial operations are circumscribed mainly within the Mexican territory and that Complainant has not provided any proof of a global operation that would merit the cancellation of registration of Respondent and transfer in Complainant’s favor of the domain name in dispute.

6. Discussion and Findings

In accordance with the Policy, Paragraph 4(a), the Complainant must prove that:

“(i) the domain name in question is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name, and

(iii) the domain name has been registered and is being used in bad faith.”

In the administrative proceeding, the Complainant must prove that each three of these elements are present.

A. Identical or Confusingly Similar

Complainant has proved that it has rights to the trademark PARFARM. Under Mexican law, the exclusive right to use a trademark derives from its registration. Complainant has submitted evidence of a valid trademark registration obtained in 1968, and renewed in October 1993.

Respondent’s allegations regarding Complainant’s lack of registration of the trademark PARFARM internationally have no significance in this procedure. The Policy does not require that Complainant’s mark be registered internationally; it clearly sets forth the requirement that Complainant has rights to a trademark, as is the case here. This requirement has been met by showing the existence of a valid trademark registration in Mexico.

Respondent’s interpretation of the Paris Convention is not precise. This international instrument does not oblige Complainant to obtain trademark registrations in every Member State, within the six-month priority period granted therein. This period is intended to be a benefit to applicants, not the other way around, and certainly not a constraint to force such applicants to file trademark applications around the world.

The fact that Complainant’s trademark covers products from international classes 1, 3 and 5 is also without significance to this proceeding. The Policy requires that Complainant shows rights to a trademark, not coverage of such trademark rights regarding every available class.

This Panel finds that the disputed domain name <parfarm.com> is identical to Complainant’s registered trademark PARFARM. The only discrepancy between the former and the latter, i.e., the addition of the generic top-level domain (gTLD) “.com” to the contested domain name is without legal significance. See CBS Broadcasting Inc. v. Worldwide Webs, Inc., WIPO Case No. D2000-0834, (September 4, 2000). See also Ahmanson Land Company v. Vince Curtis, WIPO Case No. D2000-0859, (December 4, 2000) (citing in turn Monty and Pat Roberts, Inc. v. J. Bartell, WIPO Case No. D2000-0300, [June 13, 2000]; J.P. Morgan v. Resource Marketing, WIPO Case No. D2000-0035, [March 23, 2000]).

Numerous Policy decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. See for example the following decisions: The Nasdaq Stock Market, Inc. v. Green Angel, WIPO Case No. D2001-1010 (September 30, 2001), (citing in turn Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing & Logistics Corp., WIPO Case No. D2000-0464 (July 27, 2000); The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113 (April 13, 2000); World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306 (January 24, 2001); Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615 (August 27, 2002); Compagnie Générale des Etablissement MICHELIN v. Lost in Space, SA, WIPO Case No. D2002-0504 (August 1, 2002); Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (November 6, 2001); Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525 (January 29, 2001)).

Thus, Complainant has shown that it has rights to the trademark PARFARM and that the disputed domain name <parfarm.com> is identical to such trademark. Therefore, Complainant has complied with the first requirement of the Policy.

B. Rights or Legitimate Interests

Complainant has argued that it has not authorized Respondent to use its trademark PARFARM. Respondent has not contested this fact. Respondent alleges that it need not obtain such an authorization, because the registration of the disputed domain name grants Respondent legitimate rights over the said name. This is not precise. The Policy establishes some examples of circumstances of circumstances that may be invoked as evidence of legitimate rights to a domain name:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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.” (Policy, Paragraph 4c).

Respondent has not submitted evidence showing that any of these circumstances are present.

Notwithstanding the fact that Respondent claims to have maintained the disputed domain name since 1999, as part of an integral commercial plan in the agricultural sector, aimed at farm owners, Respondent has provided no evidence to support this allegation.

Respondent’s argument that the disputed domain name does not have a “.mx” country- code suffix and that it therefore does not conflict with a local Mexican company, is irrelevant. Mexican companies are not constrained to the “.mx” name space. This Panel sees no reason why Complainant should limit itself to the “.mx” realm.

In light of the above, this Panel concludes that Respondent has no legitimate rights or interests to the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy establishes circumstances that, without limitation, constitute evidence of the registration and use of a domain name in bad faith:

“(i) 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; 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; or

(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.”

Complainant has shown that the disputed domain name resolved to the Web site of Complainant’s competitor. This Panel does not find credible Respondent’s argument that “www.parfarm.com” is the abbreviation of the joint venture to be named Panamerican Farm Products, especially taking into account that one of the companies which was supposed to become a part of such a joint venture was precisely Complainant’s competitor, i.e. Laboratorios Tornel, S.A. See The Nasdaq Stock Market, Inc., v. Hamid Reza Mohammad Pouran, WIPO Case No. D2002-0770, (October 16, 2002).

Respondent’s argument that the disputed domain name resolved to the Web site of Complainant’s competitor is not credible either. Directing Internet users who are looking for Complainant, to one Web page that displays contents originated from Complainant’s competition is not likely to be the result of a programming error or a coincidence.

In fact, this conduct constitutes one of the circumstances set forth in Paragraph 4b)iv) of the Policy: intentionally attempting to attract, for commercial gain, Internet users to another on-line location (in this case, to the site of a competitor of the Complainant), by creating a likelihood of confusion with Complainant’s mark as to the source, affiliation or endorsement of the site.

Based on the foregoing analysis, the Administrative Panel concludes that the Complainant has provided sufficiently evidence that Respondent’s registration and use of the domain name <parfarm.com> are in bad faith.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <parfarm.com> be transferred to the Complainant.

Kiyoshi I. Tsuru
Sole Panelist

Dated: April 1, 2003

No Comments

seccionamarilla.com, seccionamarilla.org, laseccionamarilla.com, laseccionamarilla.net, et.al.

January 22, 2003

Joel Gómez

2003, Miguel O'Farrell, gTLD México

WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Anuncios en Directorios S.A. DE C.V. v. Michael Alvarez
Case No. D2002-0973

1. The Parties

The Complainant is Anuncios en Directorios S.A DE C.V., Mexico City, 14060, Mexico; represented by Jesús A. Molina Salgado, Mexico City, 0100, Mexico.

The Respondent is Michael Alvarez, Highland, UT 84003, USA; represented by Jon D. Corey and Jonathan A. Land, Quinn Emanuel Urquhart Oliver & Hedges, Los Angeles, California 90017, United States of America.

2. The Domain Names and Registrars

The disputed domain names are:

1. <seccionamarilla.com>
2. <seccionamarilla.org>
3. <laseccionamarilla.com>
4. <laseccionamarilla.net>
5. <seccionblanca.com>
6. <laseccionblanca.com>
7. <yellowdir.com>
8. <yellowpagedir.com>
9. <yellowpagedirectories.com>
10. <laguiaamarilla.com>
11. <superpaginasamarillas.com>

The domain names are registered with Intercosmos Media Group Inc. dba DirectNIC.com and Tucows, Inc.(”Registrars”).

3. Procedural History

This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy (”the Policy”) adopted by the Internet Corporation for Assigned Names and Numbers (”ICANN”) on August 26, 1999, 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”) of the WIPO Arbitration and Mediation Center (”the Center”).

The complaint was filed by e-mail with the Center on October 19, 2002, and in hard copy on October 22, 2002. On October 22, 2002, the Center transmitted by e-mail to the Registrars a request for registrar verification in connection with the disputed domain names. On October 22, 2002, the Registrars confirmed that the Respondent is the registrant. On October 23, 2002, the Center notified complaint deficiency to the Complainant. The revised complaint was filed by e-mail with the Center on October 26, 2002, and in hard copy on November 4, 2002. The Center satisfied itself that the complaint complied with the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made.

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the complaint and the proceeding commenced on November 5, 2002. The Respondent timely filed the response by e-mail on November 25, 2002, and in hard copy on November 28, 2002. The Center appointed Miguel B. O´Farrell, Alan L. Limbury and Diane Cabell. The panel was properly constituted. The undersigned Panelists submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

Initially December 31, 2002, was the date scheduled for the issuance of the Panel decision. As the panelists received the materials submitted by the parties on December 24, 2002, in accordance with para. 10 (c) of the Rules for Uniform Domain Name Dispute Resolution Policy, the Administrative Panel extends the decision to January 31, 2003. The language adopted in this proceeding is English.

4. Factual Background

Complainant owns the following trademarks:

IN MEXICO:

SECCION AMARILLA (Reg. 518283 Class 16 1996; 518284 Class 35 1996; 518282 Class 38 1996);
SECCION AMARILLA AND DESIGN (Reg. 519951 Class 16 1994; 609.268 Class 16 1999; 609269 Class 16 1999, 519450 Class 35 1994; 603461Class 35 1999; 603462 Class 35 1999; 514459 Class 38 1994; 610664 Class 38 1999, 610665 Class 38 1999);
SECCIÓN AMARILLA EN LINEA…EN MEXICO AND DESIGN (Reg. 559.306 Class 16 1997; 555775 Class 35 1997; 557360 Class 38 1997);
SECCION BLANCA (Reg. 493.461 Class 16 1994; 493460 Class 35 1994, 493459 Class 38 1994);
YELLOW PAGES (Reg. 513.819 Class 16 1994; 555937 Class 38 1994);
GUIA TELEFONICA AMARILLA (Reg. 480.521 Class 16 1994);
PAGINAS AMARILLAS (Reg. 533.918 Class 16 1994; 680956 Class 38 1994);
YELLOW PAGES DIRECTORIES (Reg. 566269 Class 35 1994, 555942 Class 38 1994, 495259 Class 9 1994);
GUIA TELEFONICA AMARILLA (Reg. 480522 Class 35 1994, 480520 Class 38 1994);

IN GUATEMALA:

SECCION AMARILLA AND DESIGN (Reg. 106248 Class 16 1999, 106247 Class 35 1999);

IN NICARAGUA:

SECCION AMARILLA AND DESIGN (Reg. 47517 CC Class 16 2000, 47518 CC Class 35 2000);

IN USA:

SECCION AMARILLA AND DESIGN (Reg. 2273297 Classes 16, 35, 38 1997).

Complainant has applied for the registration of the mark SECCION AMARILLA AND DESIGN in various countries like: Colombia, Costa Rica, El Salvador, Panama and Venezuela.

Respondent registered the following domain names:

<seccionamarilla.com> registered in November 1997
<seccionamarilla.org> registered in August 2000
<laseccionamarilla.com> registered in August 1997
<laseccionamarilla.net> registered in January 2000
<seccionblanca.com> registered in March 2000
<laseccionblanca.com> registered in December 2000
<yellowdir.com> registered in January 2000
<yellowpagedir.com> registered in January 2000
<yellowpagedirectories.com> registered in January 2000
<laguiaamarilla.com> registered in August 2000
<superpaginasamarillas.com> registered in August 2000

Complainant is a Mexican company, originated in 1897, the year it first published a telephone and address directory in Mexico. The Complainant forms part of the Yellow Pages Publishers Association (YPPA) which has more than 300 affiliated publishing companies in the United States, Canada, Germany, Spain and Australia. Complainant provides its services mainly in Mexico, however, it is associated with various companies in numerous countries around the world (members and non-members of the YPPA) to provide their services worldwide. The services offered by Complainant and its associates bear trademarks owned by Complainant and/ or by one or more of the associated companies.

5. Parties’ Contentions

A. Complainant

Complainant asserts that:

No trademark application and or/ registered trademarks were found in the name of Respondent in United States Patent and Trademark Office’s web site nor in the Mexican Institute of Industrial Property’s web site. Nor were there were any matches, links, references or websites found by Yahoo! Inc.’s search engine from which it can be determined that the Respondent has any rights and/or legitimate interests in the domain names involved in the complaint.

Respondent had and has knowledge of the existence of Complainant’s activities and trademarks. He registered the domain names with the purpose of selling them to the Complainant for the amount of $2.3 million dollars and proposed, as alternative, an association/investment in Respondent’s business project. The aforesaid sum of $ 2.3 million dollars is in excess and goes beyond any amount that could be expended for registering and maintaining the domain names. Respondent intended to make a profit and this means that he intended a commercial gain. The fact that the domain names are identical and/or confusingly similar shows that the Respondent “would be intending for commercial gain misleadingly to divert consumers and /or to tarnish the trademarks at issue”.

To prevent a potential complaint in year 2001, the Respondent uploaded a “passive web site” to direct some of the domain names, which shows a typical front page advising that the web site is under construction. Others were directed to a web site at www.bestcardrates.com and to an apparent URL of a credit card company, which is not in service.

The Respondent has not been commonly known by the domain names.

The domain names are not in use, as they are identifying passive web sites.

Respondent’s bad faith registration and use is also evidenced by the fact that he has not made a legitimate use of the domain names since they were registered over two and five years ago.

Finally, Complainant requests that the contested domain names be transferred to Complainant.

B. Respondent

Respondent denies Complainant’s contentions and alleges that:

Complainant does not have exclusive rights in any of the words which appear in the domain names. Such phrases are generic.

Respondent has created and developed a business plan that would target a Spanish and Portuguese –speaking audience. He has solicited businesses, created a corporation (Seccion Amarilla Inc.), and built a web site that is in the final stages of development. In early 2001, following the decline of the “Internet gold rush”, several of Respondent’s potential venture capital investors withheld the necessary funding. In November 2001, Respondent activated a data collection and solicitation web page at <seccionamarilla.com> and used proprietary marketing and advertising techniques to attract Seccion Amarilla´s target market.

Respondent has initiated trademark protection for the SeccionAmarilla.com logo that was first used when the solicitation web page was activated in November 2001. He considered seeking trademark protection for the domain names but decided not to do so, based on advice from counsel that the phrases were generic and descriptive.

Respondent had begun building his business in 1997, and on June 14, 2002, well before Complainant brought this action, incorporated Seccion Amarilla, Inc. Respondent contends that Complainant’s SECCION AMARILLA SI FUNCIONA…Y FUNCIONA MUY BIEN mark was not published for opposition in the U.S. until June 1999.

Complainant’s assertion that the Respondent’s domain names resolved to “passive” web sites is inaccurate. The fact that Respondent used two domain names to resolve to <bestcardrates.com>, another Internet company owned by Respondent, is not the evidence of lack of rights.

Respondent did not register the domain names at issue for the purpose of selling them to Complainant. If Respondent acquired the domain names with the purpose of selling them to Complainant, presumably Respondent would have initiated contact with Complainant sometime within the three years after the registration.

6. Discussion and Findings

Under paragraph 15(a) of the Rules, the Panel must decide this conflict 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.

To qualify for cancellation or transfer, a Complainant must prove each element of paragraph 4(a) of the Policy, namely:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identity or Confusing similarity

The Panel finds that all the conflicting domain names are either identical or confusingly similar to at least one of Complainant’s trademarks.

In connection with the identity or confusing similarity, the Panel finds that the question of whether the terms and phrases that integrate the domain names are generic, could not be answered without considering each particular case and trademark. Two prior WIPO Panels (WIPO Case Nos. D2000-0489 and D2000-0490) have found that “The fact that all over Europe, as well as in the U.S., Australia, Canada, India, Russia and other countries, business directories are known under the name yellow pages precludes the Complainant’s claim to exclusivity, based on its trademarks, trade name or any other intangible asset. Some descriptive terms have to remain in the public domain in order for the information society to run smoothly.” In the United States the courts have determined that “yellow pages” is a generic term that is not protectable as a trademark. This is why Complainant had to disclaim any exclusive right in the phrase “seccion amarilla” in order to register the trademark SECCION AMARILLA SÍ FUNCIONA…Y FUNCIONA MUY BIEN AND DESIGN. On the other hand, Complainant registered the word trademarks mentioned in paragraph 4 without any disclaimers in Mexico and therefore has exclusive rights in such trademarks in Mexico. Since the Panel does not have to pass a judgment on the validity of trademarks that are registered under Mexican law, the Panel does not find that the terms under discussion are generic in that country.

B. Rights or Legitimate Interests

The Panel finds that the Respondent has been making demonstrable preparations to use the domain names in connection with a bona fide offering of goods or services. The Panel accepts that the Respondent’s business proposal is a genuine one. Respondent has proved that he prepared a business plan, solicited business to participate in his directory service, discussed his business plan with a wide range of people, signed contracts, initiated trademark protection for Seccion Amarilla logo, created a corporation; all before any notice of the dispute.

The fact that in August 2000, both parties exchanged e-mails regarding the domain names does not constitute in any way notice of the dispute. The evidence supplied by the Respondent rebuts Complainant’s assertion that after such exchange of e-mails the Respondent merely pretended to be engaging in development of the domains simply to prevent a potential complaint. In any case, Respondent has utterly proved he had been making demonstrable preparation to use the domain names before the exchange of e-mails during August 2000.

Taking into consideration that in the United States the terms involved in this dispute are considered generic and that the Respondent resides in the said country, it can be concluded that in good faith the Respondent supposed that no claim could be made against him. Respondent has proved that he had a bona fide business plan to create a one-stop portal for Internet/World Wide Web/On line yellow pages, white pages and classified advertisements and listings that would target a national and world wide Spanish, English and Portuguese-speaking audience. Initially the portal would spread throughout the U.S. Hispanic community; eventually it would fill the Spanish-speaking world. Respondent’s objective was to provide to the Hispanic business community e-commerce solutions, web tools and information designed specifically to help Hispanic companies to promote their business on line. Consequently the Panel finds that the Respondent has legitimate interest in respect of the conflicting domain names.

C. Registered and Used in Bad Faith

No finding of registration and use in bad faith can be made against the Respondent.

The Respondent did not acquire the domain names with the purpose of selling them to Complainant. Respondent has proved he created a business plan and was soliciting investors. Complainant contacted Respondent in August 2000, three years after Respondent registered <seccionamarilla.com> and <laseccionamarilla.com>, saying that it was interested in the domain names. In response, Respondent did not offer to sell the domain names for US$ 2.3 million dollars but rather to sell the business he had developed or to work together on a joint venture. If Respondent registered the domain names with the purpose of selling them to Complainant, it could be assumed that Respondent would have contacted Complainant sometime within the three years after he registered <seccionamarilla.com> and <laseccionamarilla.com>. The fact that the Complainant contacted the Respondent in first place reinforces the idea that the Respondent did not register the domain names in bad faith.

In the decision of WIPO Case No. D2000-0223, Meredith Corp. v. City Home Inc. it was said that “The fact that Respondent is seeking substantial money for what it believes to be a valuable asset is not tantamount to bad faith. Rather, it tends to show a reasonable business response to an inquiry about purchasing a business asset where Respondent had already expended time and money to develop a new part of its business (…)” In accordance with said decision, the Panel finds that the Respondent has not acted in bad faith.

The Panel finds that determing whether some of the domain names are passive web sites or not is irrelevant, since the Respondent has utterly proved he has acted in good faith.

7. Decision

Complainant has failed to establish two of the three elements of the Policy; namely: that the Respondent lacks legitimate interests and rights and that the Respondent registered and is using the conflicting domain names in bad faith. The Panel therefore declines to order the transfer of the conflicting domain names to the Complainant.

Miguel B. O´Farrell
Presiding Panelist

Alan L. Limbury
Panelist

Diane Cabell
Panelist

Dated: January 22, 2003

No Comments

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