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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Gruner + Jahr Printing & Publishing Co., v. Luis Tobena

Case No. D2000-0839

 

1. The Parties

Complainant is Gruner + Jahr Printing & Publishing Co., a partnership corporation duly organized and existing under the laws of the state of Delaware, with its principal place of business located at 375 Lexington Avenue, New York, New York 10017, in the United States of America.

Respondent is Mr. Luis Tobena, an individual whose address is Argenter 15, in Barcelona, Barcelona, España, 088003.

 

2. The Domain Name and Registrar

The domain name under dispute is "serpadres.net" (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

On July 20, 2000, and July 24, 2000, Complainant submitted its Complaint through e-mail and hardcopy, respectively, with the required filing fee for a single-member Panel, to the World Intellectual Property Organization ("WIPO") Arbitration and Mediation Center (the "WIPO Center"), in accordance with the Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, the Rules for Uniform Domain Name Dispute Resolution Policy (the " Rules"), and WIPO’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("WIPO’s Supplemental Rules).

An Acknowledgment of the Receipt of Complaint was sent to Complainant by the WIPO on July 26, 2000.

On July 27, 2000, WIPO sent a "Request for Registrar Verification" via email to NSI. On August 1, 2000, WIPO received via e-mail from NSI "Network Solutions’ Verification Response" confirming that the Domain Name is currently registered to Respondent and is in "active" status, and that a certain Network Solutions 5.0 Service Agreement is in effect.

On August 4, 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 August 4, 2000, WIPO properly sent via e-mail and hardcopy through express mail to Respondent and to the technical contact WorldNIC Name Host Network Solutions, Inc, a "Notification of Complaint and Commencement of Administrative Proceedings" enclosing copy of Complainant’s complaint. Such hardcopy was received by Respondent on August 7, 2000. Furthermore, hardcopy of such Complaint as confirmed by Complainant was also previously sent by Complainant to Respondent via Federal Express on July 20, 2000. This Panel considers that the complaint was properly notified to the registered domain-name holder, the technical contact, and the administrative contact as provided for in paragraph 2 (a) of the Rules.

On August 25, 2000, WIPO sent via e-mail and hardcopy through express mail to Respondent and to WorldNIC Name Host Network Solutions, Inc, with copy to Complainant, a "Notification of Respondent Default" confirming that Respondent has failed to comply with the deadline to submit its response, and therefore that a single panelist shall be appointed as proposed by the Complainant and as may be evidenced from paragraph 33 of Complainant’s complaint. Such hardcopy was received by Respondent on August 29, 2000.

On September 27, 2000, the undersigned signed and sent to the WIPO, a Statement of Acceptance to participate as Single Member Panelist and a Declaration of Impartiality and Independence.

On September 29, 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 October 15, 2000, as the date for issuance for the Panel’s decision, pursuant to paragraphs 6 (h) and 15 (b) of the Rules.

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

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

 

4. Factual Background

The Complainant, one of America’s leading publishing companies, was formed in 1978 and has as corporate purpose the publishing of magazines. Since such date the Complainant has used the trademark SER PADRES as the title of an Hispanic magazine in the United States, a quarterly publication with a large circulation in the United States. Complainant has made investments on various types of advertising involving such mark. Complainant has an active presence on the Internet and the trademark SER PADRES has also been marketed and promoted on the Internet and in various other media (particularly on its website at http://www.gjusa.com). SER PADRES is considered among the most famous Spanish-language parenting magazines worldwide.

Complainant has an active presence on the Internet. Some of Complainant’s web sites evidence the presence on the Internet and the availability by subscription of Complainant’s SER PADRES magazine in both the U.S. and Spain.

Complainant’s Mark is recognized and relied upon by the trade and the public as identifying Complainant and its publications and as distinguishing them from others and the goods and services of others.

A Network Solutions’ WHOIS database search indicates that the record of registration of Complainant’s Domain Name serpadres.com was created on May 2, 1995, prior to Respondent’s registration of the domain name serpadres.net which was recently created on May 30, 2000.

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

a) Federal Trademark SER PADRES, registered in the United States of America under registration Number 1’670,214, issued on December 31, 1991, for a magazine directed to parents, with Gruner + Jahr Printing & Publishing Co., as the sole and exclusive listed owner;

b) Trademark SER PADRES registered in Spain under registration Number 1,034,812, issued on December 28, 1987, for goods including magazines, with G y J España Ediciones, S.L.S. en C., as the sole and exclusive listed owner;

c) Trademark SER PADRES HOY registered in Spain under registration Number 1,129,485, issued on May 5, 1987, for goods including magazines, with G y J España Ediciones, S.L.S. en C., as the sole and exclusive listed owner;

 

5. Parties’ Contentions

A. Complainant

The Complainant alleged that the domain name serpadres.net, used and registered by Respondent, is identical to the SER PADRES trademark owned by Complainant in the U.S. and its related company in Spain. That the SER PADRES mark is both famous and distinctive in both the United States and Spain at the time that Respondent registered serpadres.net, and Respondent, as a resident of Spain, was familiar with this famous mark. That the Respondent has no rights or legitimate interests with respect to serpadres.net. That the domain name serpadres.net bears no relationship to the actual or intended business of Respondent. That the Respondent registered the domain name serpadres.net for the sole purpose of selling it and/or trading on the goodwill of Complainant and its trademark SER PADRES. That the serpadres.net domain name has been registered and is being used in bad faith by Respondent. That Respondent seeks to take advantage of the owner of a famous mark and to attract traffic to its own site by improper use of a famous mark. That the Respondent seeks to intentionally attract Internet users familiar with Complainant’s trademark, who are likely to be confused into believing that Complainant had endorsed, sponsored or licensed the use of a web site bearing the name serpadres.net. That by using the domain name serpadres.net, the Respondent intentionally attempts to attract, for commercial gain, Internet users to his web site or other on-line location, by creating a likelihood of confusion with Complainant’s Mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on the web site or location, and therefore Respondent’s activities correspond to those listed in paragraph 4(b)(iv) of the Policy as evidence of bad faith registration and use of a domain name

That the Respondent has not used the domain name in connection with any bona fide offering of goods or services, has not been commonly known by the domain name, and has not made any legitimate noncommercial or fair use of the domain name.

That the Respondent has registered a domain name incorporating a trademark that was both famous and distinctive at the time the domain name was registered. That Respondent’s registration and use, including its attempt to sell the domain name serpadres.net, infringes and dilutes the Complainant’s Mark.

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

B. Respondent

Respondent did not reply to Complainant’s contentions.

 

6. Discussion and Findings

The Panel considers that the Respondent by registering the contested domain name with 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, and a fair and reasonable opportunity to respond and to present their respective cases, and be treated with equality in these administrative proceedings. In the case subject matter of this proceedings, the Panel is satisfied that the 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, that the default of the Respondent to submit a response is not due to any omission under these proceedings, and that there is sufficient and adequate evidence confirming the above.

Considering that the Respondent has defaulted in submitting a response to the allegations of Complaint, 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 therefrom 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 SER PADRES trademark and to the name of one of Complainant’s products.

Furthermore, this Panel finds that there is no indication that the Respondent has any rights or legitimate interests in respect of the domain name as it has not used or prepared to use the SER PADRES 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) (iv) of the Policy, in view that Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark, as to the source, sponsorship, affiliation, or endorsement of Respondents’ website.

With respect to Complainant’s allegations that Respondent 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, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name, this Panel considers that in this particular respect there is no bath faith use, registration or conduct by Respondent in view that all related negotiations were initiated and promoted by the Complainant, and shall not be considered to provide evidence that such domain negotiations constitute the primary purpose for Respondent’s domain name acquisition or registration.

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 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 the name of Complainant’s product, SER PADRES, and to Complainant’s trademark SER PADRES;

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

(3) that the serpadres.net 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 serpadres.net be transferred to Gruner + Jahr Printing & Publishing Co., Complainant.

 


 

Pedro W. Buchanan
Sole Panelist

Dated: October 15, 2000

 

Источник информации: http://www.internet-law.ru/intlaw/udrp/2000/d2000-0839.html

 

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