WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Banco Mercantil del Norte, S.A., v. Servicios de Comunicación En Linea

Case No. D2000-1215

 

1. The Parties

Complainant is Banco Mercantil del Norte, S.A., a corporation duly organized and existing under the Mexican laws, with its principal place of business located at Padre Mier Ote. 227, Col. Centro, Monterrey N.L, Mexico

Respondent is Servicios de Comunicación En Linea, with its principal place of business located at Av. Lázaro Cardenas 2400, LOSOLES, Garza García, NL 64600. México.

2. The Domain Name and Registrar

The domain name under dispute is banorte.com (the “Domain Name”).

The registrar of the domain name under dispute is Network Solutions, Inc. (”NSI” or the Registrar), with business address in Herndon, Virginia, USA.

3. Procedural History

The Complaint was submitted by email on September 14, 2000, and by hard copy on September 18, 2000, with the required filing fee for a single-member Panel, to the World Intellectual Property Organization (”WIPO”) Arbitration and Mediation Center (the “WIPO Center”), in accordance with the Uniform Domain Name Dispute Resolution Policy (the “Policy”) adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and WIPO’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (”WIPO’s Supplemental Rules).

An Acknowledgment of the Receipt of Complaint was sent to Complainant by the WIPO on September 18, 2000.

On September 19, 2000, WIPO sent a “Request for Registrar Verification” via email to NSI requesting, a confirmation that NSI had received a copy of the complaint; that the domain name under dispute is registered with NSI; that Respondent is the current registrant of such domain name; and full contacts details available under the WHOIS database. On September 24, 2000, WIPO received via e-mail from NSI the “Network Solutions’ Verification Response”.

On September 25, 2000, WIPO completed a “Formal Requirements Compliance Checklist”. It is worth mentioning that the undersigned Panel has independently determined and agrees with WIPO’s assessment that the Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy (the ” Policy”), the Rules, and WIPO’s Supplemental Rules.

On September 29, 2000, WIPO properly sent via e-mail, via facsimile and a hardcopy through express mail to Respondent and to its registered administrative contact, technical contact, zone contact and billing contact, a “Notification of Complaint and Commencement of Administrative Proceedings” enclosing copy of Complainant’s complaint. Furthermore, hardcopy of such Complaint as confirmed by Complainant was also previously sent by Complainant to Respondent via courier on September 13, 2000.

On October 12, 2000 via e-mail (received by WIPO on October 13, 2000), on October 16, 2000 via facsimile and on October 17, 2000 via hardcopy, Respondent through its administrative contact, Mr. Héctor Galván, expressly confirmed the legal title to the banorte.com domain name, recognized his participation as defendant in this administrative proceeding and submitted a request for the translation of the Complaint from English into Spanish and an extension of the deadline for filing the response. On October 18, 2000, WIPO requested Complainant to comment on Respondent request on the possibility of changing the proceeding language. On October 18, 2000, Complainant, based on Paragraph 11 of the Rules, which establishes that a change of language can only be admitted if both parties agree on that matter, contested the Respondent requests, not agreeing to the change of language. On October 19, 2000, WIPO granted an extension of eight (8) additional days for the Response, establishing the new due date for the Response until October 27, 2000, and confirmed that the language of the administrative proceedings will continue to be in English. This was reconfirmed by the WIPO on October 20, 2000.

This Panel also considers that the language of the proceeding, absent party agreement to the contrary, is English, as being the language of the domain registration and Service Agreement, pursuant to paragraph 11 (a) of the Rules. Nevertheless, this Panelist has decided, to ensure that the Parties be treated with equality and that each Party be given a fair opportunity to present its case, as provided for under paragraph 10 (b) of the Rules, and particularly for the clarification of the facts under dispute, to receive and consider all information or documentation received whether in the English or Spanish languages.

This Panel further considers that the complaint was properly notified to the registered domain-name holder, the administrative contact, technical contact, zone contact and billing contact as provided for in paragraph 2 (a) of the Rules.

The Respondent failed to comply with the deadline to submit its response, and therefore the single panelist was appointed as proposed by the Complainant and as may be evidenced from paragraph 44 of Complainant’s complaint.

On October 28, 2000, this is after the October 27, 2000 deadline, Respondent’s administrative contact, Mr. Héctor Galván, untimely submitted response indicating that he is no longer the owner of the domain name “banorte.com”, due to the fact that he sold the company, including the domain name to a person named Gabriel Arturo Hernández Mariscal since September 21, 2000 (in contradiction to his October 17, 2000 communication). Furthermore, on such communication Respondent confirms that he is not able to provide any related supporting documentation. On November 3, 2000, Complainant submitted additional comments to the Respondent’s response. This was also complemented with a certain communication dated November 7, 2000 to WIPO from Mr. Gabriel Arturo Hernández Mariscal.

On November 8, 2000, the undersigned signed and sent to WIPO, a Statement of Acceptance to participate as Single Member Panelist and a Declaration of Impartiality and Independence.

On November 10, 2000, WIPO sent to Complainant and Respondent a “Notification of Appointment of Administrative Panel and Projected Decision Date”, appointing Pedro W. Buchanan as Sole Panelist and scheduling November 23, 2000, as the date for issuance for the Panel’s decision, notifying the above pursuant to paragraphs 6 (f) and 15 (b) of the Rules. On the same date, WIPO transferred the case file to the Sole Panelist.

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

4. Factual Background

The Complainant, Banco Mercantil del Norte, S.A. (also known nation-wide by its acronym “Banorte”), is the primary subsidiary of “Grupo Financiero Banorte”, one of Mexico´s largest and oldest financial institutions, which has been present in Mexico since 1899. Banco Mercantil del Norte, S.A., launched a private equity offering what was the beginning of its privatization and expansion phase. It continued with the creation of its leasing services subsidiary (Arrendadora Banorte) in 1990, and of its factoring and warehousing subsidiaries (Almacenadora Banorte and Factor Banorte) in 1991. Since 1997, through an alliance with Generalli, one of the main European insurance companies, also offers insurance, pension funds and Afore’s services, respectively known nation-wide as Afore Banorte-Generalli, Seguros Banorte-Generalli and Pensiones Banorte-Generalli. Currently, Complainant is present in all Mexico’s 32 states and in Mexico City, with 1,350 ATM´S and branches in 167 cities across Mexico, more than 450 branches nationwide, as well as operations in New York and Grand Cayman.

The BANORTE trademark is a well-known mark in Mexico and is Complainant’s famous trademark and service mark. Complainant obtained its first “BANORTE” trademark registration on April 19, 1991, prior to Respondent’s registration of the domain name “BANORTE.COM” which was created on October 13, 1998 as indicated by Network Solutions’ WHOIS database search. Although Complainant obtained its first trademark registration in 1991, the date of its use goes back to 1985 as it is evidenced in Complainant’s trademark registrations. Complainant has made various types of advertising involving the mark BANORTE. Such trademark use has been promoted for over 15 years in all kind of media, including but not limited to radio, newspapers and television.

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

a) Federal Trademark BANORTE and design, registered in the General Office of Technological Development of the Ministry of Commerce and Industrial Development under registration Number 408130, issued on March 4, 1992, on class 36 covering insurance and bonds for the banking and credit services, as well as for any other auxiliary credit activity, with application date on April 19, 1991, with Banco Mercantil del Norte, SNC (sic), as the sole and exclusive listed owner;

b) Trademark BANORTE and design, registered in the Mexican Institute of Industrial Property under registration Number 482413, issued on December 13, 1994, on class 16 covering different types of goods, with and design, date on September 12, 1994, with Grupo Financiero Banorte, S.A. de C.V., as the sole and exclusive listed owner;

c) Trademark BANORTE and design, registered in the Mexican Institute of Industrial Property under registration Number 482414, issued on December 13, 1994, on class 16 covering different types of goods, with application date on September 12, 1994, with Grupo Financiero Banorte, S.A. de C.V., as the sole and exclusive listed owner;

d) Trademark BANORTE and design, registered in the Mexican Institute of Industrial Property under registration Number 482415, issued on December 13, 1994, on class 16 covering different types of goods, with application date on September 12, 1994, with Grupo Financiero Banorte, S.A. de C.V., as the sole and exclusive listed owner;

e) Trademark BANORTE and design, registered in the Mexican Institute of Industrial Property under registration Number 482416, issued on December 13, 1994, on class 16 covering different types of goods, with application date on September 12, 1994, with Grupo Financiero Banorte, S.A. de C.V., as the sole and exclusive listed owner;

f) Trademark BANORTE and design, registered in the Mexican Institute of Industrial Property under registration Number 484874, issued on March 13, 1995, on class 36 covering insurance and bonds with application date on September 12, 1994, with Grupo Financiero Banorte, S.A. de C.V., as the sole and exclusive listed owner;

g) Trademark BANORTE and design, registered in the Mexican Institute of Industrial Property under registration Number 484875, issued on March 13, 1995, on class 36 covering insurance and bonds with application date on September 12, 1994, with Grupo Financiero Banorte, S.A. de C.V., as the sole and exclusive listed owner;

h) Trademark BANORTE and design, registered in the Mexican Institute of Industrial Property under registration Number 484876, issued on March 13, 1995, on class 36 covering insurance and bonds with application date on September 12, 1994, with Grupo Financiero Banorte, S.A. de C.V., as the sole and exclusive listed owner;

i) Trademark BANORTE and design, registered in the Mexican Institute of Industrial Property under registration Number 484877, issued on March 13, 1995, on class 36 covering insurance and bonds, with application date on September 12, 1994, with Grupo Financiero Banorte, S.A. de C.V., as the sole and exclusive listed owner;

j) Trademark BANORTE registered in the Mexican Institute of Industrial Property under registration Number 657005, issued on May 30, 2000, on class 17 covering different types of goods, with application date on April 27, 2000, with Banco Mercantil del Norte, S.A., as the sole and exclusive listed owner;

k) Trademark BANORTE registered in the Mexican Institute of Industrial Property under registration Number 657006, issued on May 30, 2000, on class 18 covering different types of goods, with application date on April 27, 2000, with Banco Mercantil del Norte, S.A., as the sole and exclusive listed owner;

l) Trademark BANORTE registered in the Mexican Institute of Industrial Property under registration Number 657007, issued on May 30, 2000, on class 19 covering different types of goods, with application date on April 27, 2000, with Banco Mercantil del Norte, S.A., as the sole and exclusive listed owner;

m) Trademark BANORTE registered in the Mexican Institute of Industrial Property under registration Number 657008, issued on May 30, 2000, on class 20 covering different types of goods, with application date on April 27, 2000, with Banco Mercantil del Norte, S.A., as the sole and exclusive listed owner;

n) Trademark BANORTE registered in the Mexican Institute of Industrial Property under registration Number 657009, issued on May 30, 2000, on class 21 covering different types of goods, with application date on April 27, 2000, with Banco Mercantil del Norte, S.A., as the sole and exclusive listed owner;

o) Trademark BANORTE registered in the Mexican Institute of Industrial Property under registration Number 657010, issued on May 30, 2000, on class 22 covering different types of goods, with application date on April 27, 2000, with Banco Mercantil del Norte, S.A., as the sole and exclusive listed owner;

p) Trademark BANORTE registered in the Mexican Institute of Industrial Property under registration Number 657011, issued on May 30, 2000, on class 23 covering different types of goods, with application date on April 27, 2000, with Banco Mercantil del Norte, S.A., as the sole and exclusive listed owner;

q) Trademark BANORTE registered in the Mexican Institute of Industrial Property under registration Number 657012, issued on May 30, 2000, on class 24 covering different types of goods, with application date on April 27, 2000, with Banco Mercantil del Norte, S.A., as the sole and exclusive listed owner;

r) Trademark BANORTE registered in the Mexican Institute of Industrial Property under registration Number 657013, issued on May 30, 2000, on class 25 covering different types of goods, with application date on April 27, 2000, with Banco Mercantil del Norte, S.A., as the sole and exclusive listed owner;

s) Trademark BANORTE registered in the Mexican Institute of Industrial Property under registration Number 657014, issued on May 30, 2000, on class 26 covering different types of goods, with application date on April 27, 2000, with Banco Mercantil del Norte, S.A., as the sole and exclusive listed owner;

t) Trademark BANORTE registered in the Mexican Institute of Industrial Property under registration Number 657015, issued on May 30, 2000, on class 27 covering different types of goods, with application date on April 27, 2000, with Banco Mercantil del Norte, S.A., as the sole and exclusive listed owner;

u) Trademark BANORTE registered in the Mexican Institute of Industrial Property under registration Number 657016, issued on May 30, 2000, on class 28 covering different types of goods, with application date on April 27, 2000, with Banco Mercantil del Norte, S.A., as the sole and exclusive listed owner;

v) Trademark BANORTE registered in the Mexican Institute of Industrial Property under registration Number 657017, issued on May 30, 2000, on class 29 covering different types of goods, with application date on April 27, 2000, with Banco Mercantil del Norte, S.A., as the sole and exclusive listed owner;

w) Trademark BANORTE registered in the Mexican Institute of Industrial Property under registration Number 657018, issued on May 30, 2000, on class 30 covering different types of goods, with application date on April 27, 2000, with Banco Mercantil del Norte, S.A., as the sole and exclusive listed owner;

x) rademark BANORTE registered in the Mexican Institute of Industrial Property under registration Number 657019, issued on May 30, 2000, on class 31 covering different types of goods, with application date on April 27, 2000, with Banco Mercantil del Norte, S.A., as the sole and exclusive listed owner;

y) Trademark BANORTE registered in the Mexican Institute of Industrial Property under registration Number 657020, issued on May 30, 2000, on class 32 covering different types of goods, with application date on April 27, 2000, with Banco Mercantil del Norte, S.A., as the sole and exclusive listed owner;

z) Trademark BANORTE registered in the Mexican Institute of Industrial Property under registration Number 657021 issued on May 30, 2000, on class 33 covering different types of goods, with application date on April 27, 2000, with Banco Mercantil del Norte, S.A., as the sole and exclusive listed owner;

1) Trademark BANORTE registered in the Mexican Institute of Industrial Property under registration Number 657022, issued on May 30, 2000, on class 34 covering different types of goods, with application date on April 27, 2000, with Banco Mercantil del Norte, S.A., as the sole and exclusive listed owner;

2) Trademark BANORTE registered in the Mexican Institute of Industrial Property under registration Number 657023, issued on May 30, 2000, on class 35 covering different types of services, with application date on April 27, 2000, with Banco Mercantil del Norte, S.A., as the sole and exclusive listed owner;

3) Trademark BANORTE registered in the Mexican Institute of Industrial Property under registration Number 657024, issued on May 30, 2000, on class 37 covering different types of services, with application date on April 27, 2000, with Banco Mercantil del Norte, S.A., as the sole and exclusive listed owner;

4) Trademark BANORTE registered in the Mexican Institute of Industrial Property under registration Number 657025, issued on May 30, 2000, on class 39 covering different types of services, with application date on April 27, 2000, with Banco Mercantil del Norte, S.A., as the sole and exclusive listed owner;

5) Trademark BANORTE registered in the Mexican Institute of Industrial Property under registration Number 657026, issued on May 30, 2000, on class 40 covering different types of services, with application date on April 27, 2000, with Banco Mercantil del Norte, S.A., as the sole and exclusive listed owner;

6) Trademark BANORTE registered in the Mexican Institute of Industrial Property under registration Number 657027, issued on May 30, 2000, on class 41 covering different types of services and activities, with application date on April 27, 2000, with Banco Mercantil del Norte, S.A., as the sole and exclusive listed owner;

7) Trademark BANORTE registered in the Mexican Institute of Industrial Property under registration Number 657028, issued on May 30, 2000, on class 42 covering different types of services, with application date on April 27, 2000, with Banco Mercantil del Norte, S.A., as the sole and exclusive listed owner;

Trademark BANORTE registered in the Mexican Institute of Industrial Property under registration Number 658661, issued on June 13, 2000, on class 6 covering different types of goods, with application date on May 4, 2000, with Banco Mercantil del Norte, S.A., as the sole and exclusive listed owner;

9) Trademark BANORTE registered in the Mexican Institute of Industrial Property under registration Number 658662, issued on June 13, 2000, on class 7 covering different types of goods, with application date on May 4, 2000, with Banco Mercantil del Norte, S.A., as the sole and exclusive listed owner;

There are also some pending applications on classes 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15 and 17 covering different types of goods filed before the Mexican Institute of Industrial Property on May 4, 2000, on class 7 covering different types of goods, by Banco Mercantil del Norte, S.A.

A. Complainant

The Complainant alleges that the domain name banorte.com, registered by Respondent, is identical to the BANORTE trademark, which is Complainant’s famous trademark and service mark, as well as to the commercial name used by Complainant for over 15 years in all kind of media. That BANORTE is a well-known trademark in Mexico and abroad and that Complainant has been using BANORTE in Mexico and abroad as its main trademark for more than fifteen years. That although it obtained its first BANORTE trademark registration in 1991, the date of its first use goes back to 1985. That it has registered and/or is in the process of registering the BANORTE trademark in Mexico, both as a nominative mark and with design, in all of the 42 classes of the International Classification of Products and Services for the Purposes of Registration of Marks, with a total of 48 registrations and/or applications within Mexico.

Furthermore, the Complainant alleges that the banorte.com domain name was registered and is being used in bad faith by Respondent. That the Respondent registered the domain names with the sole purpose of seeking an unjustifiable benefit from the Complainant, and without having any legitimate interest in either of these domains. That when the Complainant became aware of the Respondent’s registrations, it approached Mr. Gustavo Fuentevilla Martinez in order to find out its intention in registering the Complainant’s well-known trademark as domain names. That it became quickly apparent that the purpose was to obtain an unfair economical benefit from such registrations. That the contact information available for the Domain Name in Network Solutions’ WHOIS database has changed repeatedly to include apparently false or at the very least misleading information.

That Respondent tried to register the word “Banorte” as a commercial name in class 42. That as expected, such application has been denied by the Mexican Industrial Property Institute, which cited Complainant’s registries as previous registries, thus impediments for registration. That the Domain Name was used in connection with a web site for “Banquetes Nortenos Tec” (Tec Northern Banquets). Yet, the web site for Banquetes Nortenos Tec does not include an address or a telephone number to allow one to order the offered banquet services. The site does offer an electronic mail address, but no replies have been received when e-mail requests for information have been sent. That Banquetes Nortenos Tec does not exist as a company in Mexico, as evidenced from the confirmation from Nuevo Leon’s Public Registry of Commerce and Property. That the Respondent’s bad faith and illegitimate intentions are clearly revealed by its economic motives and the substantial increase in its demand for transferring the Domain Name. In general that the domain name banorte.com has no relationship to the actual or intended business of Respondent.

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

B. Respondent

Respondent alleges that he acquired the company on August 8th, 2000 and that he sold the company on September 21, 2000. That information related to the domain name contacts and access to the domain name have been affected by third parties. He indicated that all evidence of such transfer as well as trademark registrations were in the hands of Mr. Gabriel Arturo Hernández Mariscal the new owner. A certain communication dated November 7, 2000 to the WIPO from Mr. Gabriel Arturo Hernández Mariscal also makes reference to the transfer of the banorte domain name, to the existence of the company Banquetes Northeños Tec, to the existence of an “endorsement” of certain trademark registrations before the IMPI to communications regarding negotiations with the “bank”, and also that that information related to the domain name contacts and access to the domain name have been affected by third parties.

6. Discussion and Findings

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

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

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

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

In the case subject matter of this proceeding, the Panel is satisfied that these proceedings have been carried out by complying with such elemental due diligence requirements, and particularly contemplating the notification of the filing of the Complaint and the initiation of these proceedings giving the Respondent a right to respond.

There is sufficient and adequate evidence confirming the above.

Respondent alleges that he acquired the company on August 8^th, 2000 and that he sold the company and assets including, the domain name under dispute on September 21, 2000. Complainant’s complaint is dated September 13, 2000 (on the same date it was transmitted to the Respondent by courier, with return receipt requested), and was filed via e-mail before the WIPO Center on September 14, 2000 and with its hardcopy on September 18, 2000. All of this occurred prior to the alleged transfer of Respondent’s company and assets including, the domain name under dispute.

Under paragraph 3 (a) of the Policy, cancellations, transfers, and changes to domain name registrations shall only be made upon receipt of written or appropriate electronic instructions from the domain name holder or its authorized agent to the Registrar, on the understanding that as provided for under paragraph 8 (a) (i) of the Policy, a holder of a domain name may not transfer the domain name registration to another holder during a pending administrative proceeding brought pursuant to paragraph 4 of the policy. In this respect there has been no written or appropriate electronic instructions from the domain name holder or its authorized agent to the Registrar confirming transfers or changes to domain name registrations since September 14, 2000, nor this feasible until the conclusion of this administrative proceeding as provided for under paragraph 8 (a) (i) of the Policy.

The above should be taken into consideration regarding the alleged transfers of the domain name under dispute to Mr. Gabriel Arturo Hernández Mariscal since September 21, 2000 or to any other company or person referred to in the documentation that has been submitted. Therefore, this Panel finds that Servicios de Comunicación En Linea shall be considered as the Respondent under these proceedings and has received and given proper consideration to all information, communications or documentations that was submitted by its holder, agents, officers, administrative contact, technical contact, zone contact and billing contact. 

This proceeding is related to a domain name under dispute which must be resolved based on the above mentioned Rules and Policy. Furthermore, it is within the spirit and applicable Rules or Policy, to procure an effective and uninterrupted use of the Internet and of its domains without the same being affected from domain name transfers which have not been registered in the system.

In consideration to the particularities of this case, this Panel as directed by paragraphs 14 (a) and (b) and 15 (a) of the Rules shall decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, and may draw such inferences there from as it may consider appropriate on the basis of Complainant’s undisputed representations.

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

This Panel finds that Respondent’s Domain Name is identical to Complainant’s BANORTE trademark and commercial name. That although the Respondent has filed for the registration an identical trademark on November 18, 1999, under a different class (class 42), such filing was subject to requirements and prior existing registrations were noted. Furthermore, Complainant’s registration, first and general use has been made significantly before such date and with respect to a very well known trademark and commercial name. Furthermore, this Panel finds that, the registration application and use of such trademark by Respondent, from the information and facts that were analyzed, and from the lack of evidence to the contrary, is questionable and in bad faith.

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

The Panel also finds that Respondent has used the Domain Name in bad faith, in particular but without limitation, pursuant to Paragraph 4 (b) of the Policy, in view that the Respondent registered the domain name with the purpose of seeking an unjustifiable economic benefit from the Complainant in exchange for the transfer of the domain name; has made a bad faith use of the domain name; and, has changed repeatedly the contact information available for the Domain Name in Network Solutions’ WHOIS database, to include false and misleading information, with bad faith intentions. Finally, from the information and facts that were analyzed, and from the lack of evidence to the contrary, the constant change of parties having rights under the domain name, and including those changes that have occurred during these proceedings are questionable and in bad faith.

Respondent did not address Complainant’s contentions.

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

7. Decision

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

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

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

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

Therefore, the Panel requires, pursuant to what is provided for under Paragraphs 3 (c) and 4 (i) of the Policy, that the domain name banorte.com be transferred to Banco Mercantil del Norte, S.A., Complainant.

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Pedro W. Buchanan
Sole Panelist

Dated: November 23, 2000

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

TELEVISA v. RETEVISION INTERACTIVA S.A.

Case No. D2000-0264

 

1. The Parties

1.1 Complainants are the international group of companies known as, and collectively referred to hereinafter as, “TELEVISA”. This group of companies includes GRUPO TELEVISA, S.A., Avenida Vasco de Quiroga 2000, Edificio “A”, Piso 4, Col: Zedec Santa Fe, 01210 Mexico, D.F., TELEVISA S.A.. DE C.V., Avenida Chapultepec N° 28, Colonia Doctores, C.P. 06724, Mexico, D.F., and TELEFILMES, S.A. DE C.V., Vasco de Quiroga 2000, Zedec Santa Fe, 01210 Mexico, D.F. Telephone: (525) 261-2510; Fax (525) 261-2546.

1.2 The Respondent is RETEVISION INTERACTIVA S.A., Avda. Diagonal, 662 Barcelona, E-08034 España.

2. The Domain Name and Registrar

2.1 The domain names which are the subject of this proceeding are “eresmas.com”, “eresmas.net” and “eresmas.org” owned by Respondent. The domain names are registered with REGISTER.COM (www.register.com).

3. Procedural History

3.1 A Complaint was submitted to the WIPO Arbitration and Mediation Center (”WIPO”) pursuant to the Uniform Domain Name Dispute Resolution Policy (”Policy”) on April 6, 2000.

3.2 On April 9, 2000, a Request for Registrar Verification was sent to REGISTER.COM which issued its verification on April 18, 2000.

3.3 The Notification of Complaint was sent from WIPO to Respondent by e-mail, courier, and facsimile on April 20, 2000.

3.4 A Response was filed on May 12, 2000.

3.5 The Notification of Appointment of an Administrative Panel (”Panel”) was sent on May 29, 2000, thus commencing this administrative proceeding.

4. Factual Background

4.1 Complainant owns various Mexican registered trademarks, for a word mark “ES MAS” in classes 38, 42, registered on December 17, 1999, January 24, 2000.

4.2 Complainant has filed an U.S. Trademark Application, covering advertisement services in class 35 and various computer services in class 42, for the mark “ESMAS”. Application was received by USPTO on December 21^st, 1999.

4.3 Complainant owns the domain names <esmas.com>, <esmas.net> and <esmas.org>, which were registered with NSI and are used as of the date of the Complaint to give access to the Complainant’s Web site. Date of first use is not provided by Complainant, only date of registration.

4.4 Respondent has filed various word marks and device marks “ERESMAS” or “eresMAS” in Spain in classes 9 and 35 on February 29, 2000, and in March 13, 2000.

4.5 Respondent has also filed an European community trademark for the device mark “eresMAS” on March 13, 2000, in classes 9, 35 and 38. The mark has also been filed in other countries.

4.6 Respondent’s corporate name has been changed from RETEVISION INTERACTIVA to ERESMAS INTERACTIVA on April 6, 2000, after agreement of the Company’s Committee of April 5, 2000, and authorization from the Spanish Central Companies Registry of March 17, 2000.

4.7 A Respondent’s subsidiary company was incorporated in Spain on March 13, 2000, under the name ERESMAS INTERNET.

5. Parties’ Contentions

A. Complainant

5.1 Complainant claims that its trademarks and domain names were filed or registered prior to the Respondent’s domain name registrations for <eresmas.com>, <eresmas.net>, <eresmas.org>.

5.2 Complainant claims that Complainant’s use of and domain registrations for <esmas.com>, <esmas.com> and <esmas.org> grants Complainant rights on the word “ESMAS” on the basis of common law trademark and/or service mark rights which exist prior to the Respondent’s domain name registrations for <eresmas.com>, <eresmas.net>, <eresmas.org>.

5.3 Complainant argues that the domain names in dispute are virtually identical to Complainant trademarks, as these are using the identical term “esmas” as the predominant portion of its domain names. It also argues that Respondent’s domain names so resemble Complainant prior rights that this is likely to cause confusion, to cause mistake of deceive.

5.4 Complainant argues that Respondent’s Web site directly and unfairly competes with Complainant’s Web site, as both sites are Internet portals providing wide range of information to end users.

5.5 Complainant argues that it has extensively promoted and advertised its marks for featuring “ESMAS”, including on the Internet. Complainant argues that it has undertaken significant efforts in making extensive clearance searches.

5.6 Complainant argues that the Respondent’s domain names have been registered in bad faith because registration was acquired primarily for the purpose of disrupting the business of Complainants.

5.7 Complainant argues that Respondent’s domain names have been used in bad faith because “the use of the domain names by the Respondent for financial gain in connection with virtually identical Internet business interests, as Complainants’ is an intentional and willful misappropriation of Complainants’ proprietary rights“.

5.8 Complainant requests cancellation of the Respondent’s domain names.

B. Respondent

5.9 Respondent argues that existence of the Complainants was unknown up to the date of the notification of the Complaint, and that no prior approach was made by the Complainant through which the Respondent could have learned of Complainants’ project.

5.10 Respondent argues that no documentary evidence has been provided by the Complainant showing the promotion and advertising of the trademark ESMAS.

5.11 Respondent argues that Complainant’s Web site is in its early stage of development.

5.12 Respondent argues that no evidence has been provided as to the risk of confusion between the trademarks.

5.13 Respondent argues that ERESMAS and ESMAS are easy to differentiate due to the different meanings as “ERES MAS” translates to “YOU ARE MORE” and “ES MAS” to “IT IS MORE”.

5.14 Respondent argues that it has been investing significantly in the promotion of the trademark ERESMAS before the Complaint was notified to them.

5.15 Respondent argues that the filing dates of the trademarks owned by the Respondent are also prior to the notification of the Complaint.

6. Discussion and Findings

6.1 Complainant must prove each of the following three elements set forth in the Uniform Domain Name Dispute Resolution Policy Paragraph 4(a), namely (i) the domain name is identical or confusingly similar to a trademark or service mark in which the 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. The Panel will now look at each one of the elements to determine if Complainant has met its burden of proof.

6.2 Complainant has established being the owner of a trademark filed prior to the Complaint. In order to determine whether or not the Respondent’s domain names are identical or confusingly similar to the trademarks of the Complainant a comparison shall be done between the expressions “ERESMAS” and “ESMAS”. The two letters that differentiate them are the prefixed letters “ER”, which are not hyphen of punctuation of other irrelevant signs for the purpose of comparing the expressions In addition, the letters “ER” are not a simple adjunction to the word “ESMAS” but are intended to form a different Spanish word “ERES” (YOU ARE) which gives to the entire domain names “ERESMAS” (YOU ARE MORE) a different meaning from that of the trademarks of the Complainant “ESMAS” (IT IS MORE). Comparison shall also take place by separating the words which have a meaning for the Spanish public. The words “ES” (IT IS) and “ERES” (YOU ARE) are both very different in their appearance and in their meaning. In turn the words “MORE” are identical. By claiming that the Respondent’s domain names are confusingly similar to the Complainant’s trademarks, Complainant claims to have exclusive rights on the word “MAS” (MORE), which is not acceptable, as this word is highly generic and descriptive. The Panel rules that the word “ERESMAS” is not identical or confusingly similar to “ESMAS” as required by UDNDR Policy Paragraph 4(a)(i).

6.3 Respondent has evidenced that it had made substantial investments, adopted the name “ERESMAS” as its corporate name and as the name of one of its subsidiaries and filed numerous “ERESMAS” trademarks prior to the notification of the Complaint. The panel considers that the Respondent does not satisfy to the requirement of UDNDR Policy Paragraph 4(a)(ii) and thus that respondent has a legitimate use.

6.4 Both sites appear to have a similar aim of being a Portal for general information and entertainment for the public which is a very common kind of site. Complainant argues that Respondent’s domain names were chosen by Respondent with the intent to cause confusion or profit the Complainant’s trademarks and that extensive promotion and advertisement has been done for them. Nevertheless, this argument of Complainant is based on the alleged similarity of the Respondent’s domain names and the Complainant’s trademarks and Complainant provides no further facts or evidences. In particular Complainant provides no evidence suggesting that promotion has been done, and does not mention or prove the first date of such alleged promotion and advertisement. Complainant has provided insufficient documentary evidence that Complainant should have known the existence of the Complainant’s trademarks and use of its domain names on the Internet. On the contrary, evidences provided by Respondent shows that the Respondent’s domain names were used in connection with the bona fide offering of goods and services prior to the dispute. The Panel considers that Complainant has failed to prove that the domain name has been registered and is being used in bad faith as required by UDNDR Policy Paragraph 4(a)(iii).

7. Decision

7.1 The Panel decides that the Respondent’s domain names “eresmas.com”, “eresmas.net” and “eresmas.org” are not identical or confusingly similar to the service marks of Complainant, that Respondent has rights or legitimate interests in such domain names, and that Respondent has not registered or is using the domain name in bad faith.

7.2 The Panel hereby denies the Complaint.

---

Olivier ITEANU
Presiding Panelist

Dated: June 28, 2000

National Arbitration Forum

T.V. AZTECA, S.A. de C.V.
COMPLAINANT,

vs.

HECHOS DEL INTERIOR
RESPONDENT.

DECISION
Forum File FA0004000094670

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This is a DOMAIN NAME dispute pursuant to the Internet Corporation for Assigned Names and Numbers (ICANN) Domain Name Dispute Policy (the Policy).  Arbitration was requested in this case and Marilyn W. Carney, who has confirmed to the National Arbitration Forum that she has no known conflict of interest, was assigned as Arbitrator.  The matter was decided using the written record, independent searches of the internet   and consulting Spanish language dictionaries.

For the reasons explained below, the Arbitrator has reached the conclusion that the domain name should not be transferred to the Complainant.

THE DOMAIN NAME

This dispute concerns the domain name hechos.com.  The registrar for this domain name is Network Solutions, Inc.

THE PARTIES

T.V. AZTECA, S.A. de C.V. (hereafter Azteca) filed a complaint with the National Arbitration Forum on April 27, 2000 naming Hechos Del Interior (hereafter Hechos) as the Respondent.  Azteca has requested that the Domain Name hechos.com be transferred from Hechos to Azteca.

No response has been forthcoming from the Respondent.

SUMMARY OF EVIDENCE

Azteca is a Mexican corporation represented by Fulbright & Jaworski, L.L.P., attorneys at law, Houston, Texas.  Azteca, through its counsel, has attempted to communicate with Hechos by United States mail and by E-mail.  A letter to Hechos dated March 20, 2000 was returned by the U.S. Post Office with a notation indicating the respondent had moved and left no forwarding address; another notation stated:  gone 2 years to Argentina.  Azteca, in furtherance of its attempt to locate Hechos, communicated with the State of Georgia Secretary of State Corporate Record Division.  The report indicated that Hechos is a Domestic Nonprofit Corporation which was in active status – not in compliance and not in good standing.  It had been incorporated February 25, 1998, with a registered office in Marietta, Georgia, and a registered agent located at that office address.  Complainant’s Exhibit A shows that Hechos registered the Domain Name on January 8, 1997 with Network Solutions, Inc.

Azteca is the holder of eleven trademarks and service marks registered in Mexico and each of these registrations is for the mark HECHOS, either alone or with a design.  Exhibit B, 1 to 4, shows only the word HECHOS; Exhibit B, 5 to 11, shows the word HECHOS with a design in the O of the word.  (The copy was not clear, but it appears to be a map of the Western Hemisphere in the O.)

The Complainant alleges that they have monitored the hechos.com domain site and that it has not been operational during a two month period.  Complainant also believes that it appears that Hechos has abandoned all intentions to use this domain name.  They also note that Hechos could resurrect the site and use it in association with goods and services covered by Complainant’s trademarks and service marks.

FINDINGS OF FACT

The undisputed evidence establishes that:

1.  Complainant is a corporation, and is the owner and registrant of trademarks and service marks including the word HECHOS.

2.  Respondent is a State of Georgia domestic nonprofit corporation which was incorporated for unstated reasons.  It registered the Domain Name hechos.com with Network Solutions, Inc. on January 8, 1997.

3.  Complainant’s trademarks and service marks indicate they are used in connection with a variety of goods and services.  Specifically, it has used the HECHOS mark in the United States as the result of its broadcasts being received in at least the border states of the U.S.

4.  Hechos is a Spanish word which could loosely be translated to mean “doings”, “happenings”, or “events” or “news” (or, as a verb, hecho is the past participle of hacer [to do, to make]).

5.  Complainant has not established by a preponderance of the evidence that it should have exclusive use of the word Hechos.

6. Hechos is a nonexclusive name that is used in commerce by businesses other than

Complainant and Respondent as found in independent searches of the internet.

7.  Complainant has not established that the name HECHOS is exclusively identified with its business.

8.  To prevail, Complainant must establish in the record that Respondent:

(a) registered a domain name that is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

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

            (c)  has been registered and is being used in bad faith.

9.  While hechos.com may be confusingly similar to Complainant’s trademarks and service marks, the word hechos is a generic word and may be used by many others.

10. Complainant has failed to meet its burden of showing that Respondent has no rights

or legitimate interests in the domain name, as the record is silent as to what the rights and/or interests of Respondent are.

11.  Complainant has further failed to show that the use of the word hechos  is or should be exclusive to Complainant.

12.  Complainant has failed to meet its burden of showing that Respondent “registered and…used in bad faith” the domain name in violation of ICANN’s Uniform Domain Name Resolution Policy, Paragraph 4(b)(i)(ii)(iii) or (iv).

Complainant has requested that the Domain Name hechos.com be transferred from Respondent to Complainant.

CONCLUSIONS

1.  The Domain Name hechos.com is so close as to be identical or confusingly similar to Complainant’s trademarks and service marks.

2.  Complainant failed to show that it should be granted exclusive use of the disputed Domain Name, as it is not exclusively associated with its business.

3.  Complainant failed to show that Respondent is attempting to mislead customers or tarnish the name HECHOS to the detriment of the Complainant.

4.  Complainant failed to show that Respondent has registered or used the Domain Name in bad faith.  It views the non-use of the site as abandonment, but ICANN has no policies relating to abandonment.

DECISION

Based on the above findings and conclusions, it is the decision of the Arbitrator that The Domain Name HECHOS.COM registered by Respondent remain with Respondent.

This the 9th day of June, 2000.             Honorable Marilyn W. Carney, Arbitrator

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Baby Creysi Of America, Inc., Baby Creysi, S.A. de C.V., Creysi Bodega, S.A. de C.V. and Messrs. Cohen Hamui Simon and Cohen Hamui Abraham v. Asesoria en Computo Integral and Mesrs. Flores Gomez José Alonso Byrd Nery Aida Star, Ruiz Jaimez Javier and Perez Parente Martha Adriana

Case No. D2000-0237

 

1. The Parties

The complainants are:

- Baby Creysi of America, Inc., a corporation incorporated under the laws of the State of California, United States of America, having its principal place of business in San Diego, California, United States of America;
- Baby Creysi, S.A. de C.V., a corporation organized under the laws of Mexico; Creysi Bodega, S.A. de C.V., a corporation organized under the laws of Mexico; and
- Messrs Simon Cohen Hamui and Abraham Cohen Hamui, Mexican individuals.

The respondents are:

- Asesoría en Cómputo Integral, an allegedly irregular corporation organized under the laws of Mexico; and
- Messrs. José Alonso Flores Gómez, Aida Star Byrd Nery, Javier Ruiz Jiménez and Martha Adriana Pérez Parente, all Mexican individuals.

2. The Domain Name and Registrar

The Domain Names that are the subject of this complaint are:

- <babycreysi.com>
- <creysibodega.com>

The two above listed domain names were registered with Network Solutions, Inc., of 505 Huntmar Park Drive, Herndon, Virginia 20170, United States of America, respectively on January 15, 2000 and February 27, 2000.

Registrant in both cases was Asesoría en Cómputo Integral, from México D.F., México.

3. Procedural History

A Complaint made pursuant to the Uniform Domain Name Dispute Resolution Policy implemented by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999 (”Uniform Policy” or “The Policy”), and under the Rules for Uniform Domain Name Dispute Resolution Policy implemented by ICANN on the same date (”Uniform Rules”), was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (”WIPO Center”)on March 31, 2000.

A paper original of the Complaint together with all relevant annexes was sent by courier under cover letter of the same date and received by the WIPO Center on April 3, 2000. An acknowledgement of receipt was sent by the WIPO Center to the Complainant, by facsimile and e-mail dated April 3, 2000.

On April 3, 2000 the WIPO Center transmitted via e-mail to Network Solutions, Inc. a request for Registrar verification in connection with this case. On the same date, i.e. April 3, 2000, the Registrar confirmed by e-mail to the WIPO Center having received a copy of the Complaint and the fact that the Respondent, Asesoría en Cómputo Integral was the registrant of the two domain names at issue, that the two names were “active” and that the contact for both Administrative and Billing purposes was Mr. José Alonso Flores Gómez, providing his street and e-mail addresses.

On April 5, 2000 the WIPO Center sent by e-mail to Complainant inquiries concerning fulfillment of administrative requirements. These inquiries were responded satisfactorily by e-mail on April 6, 2000, by Complainant

On April 6, 2000, Complainant sent by e-mail to the WIPO Center, with a confirmation by hard copy which was received by the Center on April 10, an amendment to the Complaint in relation to Paragraph.4(b)(i) of the Policy and 3(b)(x) of the Rules, “Remedies Requested” and in relation to Paragraph 3(b)(xii) of the Rules and Paragraph 4(b) of the Supplemental Rules, “Communications”.

Notification to Respondent

Having verified that the Complaint satisfied the formal requirements of the Uniform Policy and Uniform Rules, the WIPO Center issued to the Respondent on April 11, 2000, a Notification of Complaint and Commencement of Administrative Proceedings (including a copy of the filed Complaint), to both the postal and e-mail address of the Respondent and to the the facsimile of the Respondent’s Contact, as provided by the Registrar. Copies of this Notification of Complaint were sent to the Complainant, the Registrar and ICANN on the same date.

On April 15, 2000, the WIPO Center received an e-mail by the Respondent requesting to receive the “information”, presumably related to the Complaint, in Spanish. On April 20, 2000, the WIPO Center informed Respondent on the impossibility to comply with his request pursuant to Paragraph 11 of the ICANN Rules in relation to languages of documents.

Having received no response from the Respondent within the specified time in the Notification of Complaint, on May 2, 2000, the WIPO Center issued to both parties a Notification of Respondent Default.

On May 8, 2000, the WIPO Center issued to both parties a Notification of Appointment of Administrative Panel and Projected Decision Date. This notification informed the parties that the Administrative Panel would be comprised of a single Panelist, Mr. Marino Porzio.

4. Factual Background

Complainant have demonstrated to be the legal owners, among others, each of the following trademarks, as well as owners of the rights listed below:

(i) Baby Creysi of America, Inc. is the owner of:

- U.S. registered Trademarks No. 1476928 “BABY CREYSI” (AND DESIGN); 2,197,439 “CREYSI”.

- Canadian registered Trademark No. 344400 “BABY CREYSI”(AND DESIGN).

- Mexican registered Trademarks/Service Marks No. 310493 “BABY CREYSI”; No. 310963 “BABY CREYSI”; No. 311101 “BABY CREYSI”; No. 311102 “BABY CREYSI”; No. 312102 “BABY CREYSI”; No. 312271 “BABY CREYSI”; No. 382384 “BABY CREYSI”; No. 540645 “BABY CREYSI” and No. 575820 “BABY CREYSI” (AND DESIGN).

- This Corporation also owns trademark registrations No. 043098 “BABY CREYSI” from Peru; No. 85051 “BABY CREYSI” from Panama and No. 1723165 “BABY CREYSI” from Argentina.

(ii) BABY CREYSI, S.A. DE C.V. has the following rights:

- This Corporation is the authorized licensee of BABY CREYSI OF AMERICA, INC., in respect of all the Mexican registered trademarks listed under sub-paragraph (i) above.

- In addition, this Mexican Corporation has proved to have been engaged, during more than two decades, in the manufacture, advertisement, distribution, commercialization and exportation of products bearing the marks “BABY CREYSI”, ” in Mexico.

(iii) Messrs. Simón Cohen Hamui and Abraham Cohen Hamui are the joint owners of the Mexican commercial slogan registration No. 10171 “CREYSI BODEGA”; Mexican Service Mark registration No. 619751 “CREYSI BODEGA”.

5. Parties’ contentions

Complainant

Complainants contend that the Domain Names at issue are identical to Complainants’ registered trademarks, that Respondent has no rights or legitimate interests in respect of the Domain Names, and that such Domain Names were registered and used in bad faith.

Consequently, Complainants require the transfer of the Domain Names to Complainants, in the manner specified in the Complaint and in the Amendment to the Complaint.

Respondent

Respondent has not contested the allegations of the Complaint.

6. Discussions and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy provides that the complainant must prove each of the following:

1) that the domain name registered is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

2) that the registrant of the domain name at issue has no rights or legitimate interests in respect of the domain name; and

3) that the domain name at issue has been registered and is being used in bad faith.

It is absolutely clear for anybody and the Panel so believes that the domain names <babycreysi.com> and <creysibodega.com> are identical to the trademarks and service marks registered and used by Complainants. It is also apparent that the Respondent has no rights or legitimate interests in respect of the domain name.

It is also evident that the two domain names at issue were registered by respondent in bad faith and for the purpose of “selling …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 the complainant, for valuable consideration…”, as provided for in Paragraph 4(b)(i) of the Policy. In fact, Respondent sent an e-mail to Complainant on February 7, 2000, offering the services of his firm and this e-mail was followed by another one, on the same date, sent by another agent of Respondent, whereby this agent offered to Complainants the transfer of the domain name <babycreysi.com> for US$10,000.- in the case Complainants were not interested in contracting the computing services of Respondent. Moreover, when Respondent probably realized the impossibility of obtaining payment of the sum requested from Complainants, Respondent publicly announced in their Web page as “Domain for Sale”, one of the Domain Names at issue, namely <babycreysi.com> for the price of US$50,000.-

The above facts supported by evidence filed with the Complaint, have persuaded the Panel of the bad faith of Respondent when registering the Domain Names at issue.

However, the name must not only be registered in bad faith, but it must also be used in bad faith. The issue to be determined is whether Respondent actually used the domain name in bad faith. In this respect Paragraph 4(b) of the Policy, provides that “For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be 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”.

As analyzed in the above paragraphs the circumstances described in the Paragraph 4(b)(i) of the Policy, which constitute evidence of registration or use in bad faith, are present in this case and thus the Panel can conclude that Respondent, in addition to registering the domain names at issue in bad faith, has also used these domain names in bad faith.

7. Decision

The Administrative Panel decides that the Complainant has proven each of the three elements provided for in Paragraph 4(a) of the Uniform Policy. Accordingly, the Administrative Panel requires that domain name <babycreysi.com> be transferred to Complainant Baby Creysi of America, Inc. and Domain Name <creysibodega.com> be jointly transferred to Complainants Messrs. Simón Cohen Hamui and Abraham Cohen Hamui.

---

Marino Porzio
Sole Panelist

Dated: May 22, 2000

National Arbitration Forum

TV Azteca, S.A. de C.V.
Periferico Sur N 4121
Col. Fuentes Del Pedregal
14141 Mexico, D. F.

COMPLAINANT

vs.

Allan Oretegaray
P. O. Box 1195
Duarte, CA 91109

RESPONDENT

 

DECISION
Forum File No.: 92533

---

The above matter came on for an administrative hearing on March 8, 2000 before the undersigned on the Complaint of TV Azteca, S.A. de C.V., hereinafter “Complainant”, against Allan Ortegaray, hereinafter “Respondent”. Complainant was represented by Marc L. Delflache and Eric B. Hall, 1301 McKinney, Suite 5100, Houston, TX 77010-3095. Respondent was not represented but filed his response pro se.

Upon the written submitted record, the following DECISION is made:

PROCEDURAL FINDINGS

Domain Names: tvazteca.com; tvazteca.net; and, tvazteca.org

Domain Name Registrar: Network Solutions

Domain Name Registrant: For tvazteca.com, tvazteca.com E-mail Services

For tvazteca.net, tvazteca.net E-mail Services

For tvazteca.org, Dominio Registrante

Date of Registration: For tvazteca.com, 10/14/99

For tvazteca.net, 12/6/97

For tvazteca.org, 4/30/99

Date Complaint Filed: January 26, 2000

Date of Commencement of Administrative Proceeding: January 26, 2000

Date of Response: Respondent filed a response on February 29, 2000

After reviewing the Complaint and determining it to be in administrative compliance, the National Arbitration Forum (The Forum) forwarded the Complaint to the Respondent in compliance with Rule 2(a), and the administrative proceeding was commenced pursuant to Rule 4(c). In compliance with Rule 4(d), The Forum immediately notified Network Solutions, the Internet Corporation for Assigned Names and Numbers (ICANN), and the Complainant that the administrative proceeding had commenced. Respondent filed a response to the Complaint.

The Respondent registered the domain names with Network Solutions, the entity that is the Registrar of the domain name. By registering its domain name with Network Solutions, the Respondent agreed to resolve any dispute regarding its domain name through ICANN’S Uniform Domain Name Dispute Resolution Policy.

FINDINGS OF FACT

1. The Complainant TV Azteca, S.A. de C.V. is the second largest television broadcasting company in Mexico. It owns and operates two national television networks through two anchor stations in Mexico City and numerous other stations located throughout Mexico. It also owns some 28 trademarks and service marks registered in the United States, Mexico, Canada and Spain. Each of those registrations is for the mark TV AZTECA, either alone or with a design, in connection with a variety of goods and services. These marks have been used by the Complainant in Mexico since September, 1992 and in the United States, Canada and Spain since 1992.
2. The Respondent, Allan Oretegaray does not deny that he is the registrant of the domain names in dispute. In fact, his response addresses the issues raised by the Complaint and does not contest the allegation that he is the de facto registrant. The undersigned therefore considers Allan Oretegaray to be the proper party Respondent and the de facto registrant of the domain names in dispute.
3. The domain names in question are identical or confusingly similar to the trademarks and service marks in which the Complainant has statutory and common law rights.
4. The Respondent registered the domain names in bad faith and has no rights or legitimate interests in the domain names in question. The following is evidence of Respondent’s bad faith:
   1. He has never been commonly known or otherwise known by the domain names in question.
   2. Respondent has not offered any explanation for how he arrived at the domain names in question. The only reasonable explanation is that the names are identical to the well-established trademark names used by the Complainant.
   3. The Respondent has made no legitimate use of the domain names except to refer customers to various other web sites of the Respondent.
   4. The Respondent has a profit motive evidenced by his offer to sell the domain names.
   5. The Respondent has demonstrated a pattern of bad faith by the registration of at least one other prominent domain name. Specifically, Televisa, S.A. obtained a United States Trademark for the name MUNDO LATINO in 1987. In 1997, the Respondent registered the domain name MUNDOLATINO.COM with Network Solutions.
5. Complainant’s prayer for relief requests that the domain names “tvazteca.com/net/org” be transferred to Complainant.

CONCLUSIONS

The undersigned certifies that he has acted independently and has no known conflict of interest to serve as the Arbitrator in this proceeding. Having been duly selected and being impartial, the undersigned makes the following findings and conclusions:

1.  
   1. The domain names “tvazteca.com”, “tvazteca.net” and “tvazteca.org” registered by the Respondent on 10/14/99, 12/6/97 and 4/30/99 respectively are identical and confusingly similar to trademarks in which the Complainant has rights, and to which the Respondent has no right or legitimate interest.
   2. The Respondent registered the domain names primarily for the purpose of using the Complainant’s name and reputation for profit.
   3. By using the domain names, the Respondent has and will intentionally attempt to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s marks as to source, sponsorship, affiliation, or endorsement of the web site.
   4. Respondent registered and used the domain names in bad faith.

DECISION

Based upon the above findings and conclusions, and pursuant to Rule 4(I), it is decided as follows:

THE UNDERSINGED DIRECTS THAT THE DOMAIN NAMES “AZTECA.COM”, “AZTECA.NET” AND “AZTECA.ORG” BE TRANSFERRED TO COMPLAINANT TV AZTECA S.A. De C.V.

 

Dated: March 8, 2000, by Judge Daniel B. Banks, Jr.(Ret.), Arbitrator.

Honorable Daniel B. Banks, Jr.

ARBITRATION BEFORE
THE NATIONAL ARBITRATION FORUM
REGARDING AN INTERNET DOMAIN NAME DISPUTE

Fideicomiso Puerto Aventuras,
COMPLAINANT,

vs.

Web Strategies, Inc.,
RESPONDENT.

Forum File No.: FA 0092526

 

FINDINGS OF FACT

The above entitled matter came on for an Administrative Hearing this date, before the undersigned on the Complaint of Fideicomiso Puerto Aventuras, (”Complainant”) against Respondent, Web Strategies, Inc. (”Respondent”). This matter has been brought under the Uniform Domain Name Dispute Resolution policy adopted by the Internet Corporation for assigned names and numbers (”ICANN”) and the rules for Uniform Name Dispute Resolution policy adopted by ICANN on October 24, 1999. Complainant is represented by Gayle E. Rosenstein, Esquire, Locke, Liddell and Sapp, LLP at 2200 Rosa Avenue, Suite 2200, Dallas, Texas, 75201; Web Strategies, Inc.’s address is given as Sinaloa #251-3 Col. Foma, DF 06700, Mexico, phone no.: (214) 740-8593, facsimile no.: (214) 740-8800.

Respondent’s contact is said to be Paul Fuchs, Administrative Contact, phone no.: 252114080 (Mexico), facsimile no.: (520) 395-1943 (United States). The domain names at issue are puertoaventuras.com and puertoaventuras.net, each of which are registered with Network Solutions; and were so registered on the records of Network Solutions as of the commencement of these proceedings. The Complaint herein was filed with the National Arbitration Forum.

The record establishes that though the Complainant herein is the sole entity entitled to use and register the domain names puertoaventuras.com and puertoaventuras.net, the Respondent has wrongfully refused to cooperate to cause the names to be transferred on the registry of Network Solutions to the Complainant. This failure under the circumstance of these proceedings constitutes bad faith.

Finding the Complaint to be in administrative compliance, the National Arbitration Forum describing the formal date of commencement of the administrative proceedings as January 24, 2000 in accord with the Rules notified Respondent that it had until February 16, 2000, in accord with the Rules to send a response. A formal response has not been filed and though under date of January 26, 2000, an e-mail sent to the Forum by one Urysc Asse indicates acknowledgment by the Respondent of the Complaint filed herein it fails to refute the factual allegations contained therein. Accordingly, the Respondent is in default and as provided for by the Rules it is appropriate for the undersigned to draw such reasonable inferences as he deems are warranted. The Respondent’s failure constitutes an admission of the facts alleged against in the Complaint.

The undersigned finds the Complainant herein is the holder and rightful owner of the following trademarks:

Puerto Aventuras, Trademark no. 613287

Puerto Aventuras, Trademark no. 612512

Puerto Aventuras, Trademark no. 451940

The marks utilized by the Complainant are related to the development of a planned resort community located south of Cancun, Mexico, designated as “Puerto Aventuras.” The aforesaid trademarks are intended to be used for all services related to real estate and vacation services, including river estate sales, vacation rentals, as well as all other matters designated in the Application for each of the aforesaid trademarks. The undersigned finds that the domain names “puertoaventuras.com” and “puertoaventuras.net” which are the subject of the instant Complaint have been wrongfully maintained by the Respondent in the registry of Network Solutions in violation of the rights of the Complainant herein.

Though Respondent has been requested by Complainant to transfer the “puertoaventuras.com” and “puertoaventuras.net” names to it. The plaintiff has wrongfully failed to do so, all to the damage of the Complainant.

The domain names of “puertoaventuras.com” and “puertoaventuras.net” are confusingly similar to the Complainant’s trademarks, and reflects a wrongful attempt by the Respondent to attract, for commercial gain, internet users to its web site all to the wrongful damage of the Complainant.

The undersigned concludes that the Respondent wrongfully registered, acquired and has been using the aforementioned domain names in the exercise of bad faith to the detriment of the Complainant.

The Complainant’s pray that the domain names “puertoaventuras.com” and “puertoaventuras.net” presently registered through Web Strategies, Inc., be forthwith transferred to the Complainant, Fideicomiso Puerto Aventuras, and it is so entitled.

For the reasons herein stated and pursuant to the Rule 4 (i) it is

DIRECTED THAT THE DOMAIN NAMES “puerloaventuras.com” and “puertoaventuras.net” BE FORTHWITH TRANSFERRED TO COMPLAINANT FIDEICOMISO PUERTO AVENTURAS.

The undersigned certifies that he has acted independently and has no known conflict in serving as the arbitrator in this proceeding.

Honorable Robert R. Merhige, Jr.
Retired Judge
Arbitrator