юридическая фирма 'Интернет и Право'
Основные ссылки










Яндекс цитирования

Рассылка 'BugTraq: Закон есть закон'



Rambler's Top100



Источник информации:
официальный сайт ВОИС

Для удобства навигации:
Перейти в начало каталога
Дела по доменам общего пользования
Дела по национальным доменам

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Hispanic Publishing Corporation v. Ciber Surf E.I.R.L.

Case No. D2000-0860

 

1. The Parties

The Complainant is Hispanic Publishing Corporation, a Florida corporation having its principal offices at 999 Ponce de Leon Boulevard, Suite 600, Florida, 33134, United States of America (USA).

The Respondent is Ciber Surf E.I.R.L., Calle Olleros 4982, Urb. El Parque del Naranjal, Los Olivos, Lima, Peru.

 

2. The Domain Names and Registrar

The domain names in issue in these proceedings are <hispaniconline.com> and <hispaniconline.net>.

Network Solutions is the registrar of each said domain name.

 

3. Procedural History

The Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") on July 25, 2000 by e-mail and in hard-copy on July 26, 2000.

In accordance with Paragraph 4 of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), and Paragraph 5 of the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules"), the Center has verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 ("the Policy"), the Rules and the Supplemental Rules and that payment in the required amount had been paid by the Complainant.

On August 8, 2000, the Center sent a Notification of Complaint and Commencement of Administrative Proceedings to the Respondent. The Center advised the Respondent that these Administrative Proceedings commenced on August 8, 2000 and that the Respondent was required to send a Response to the Complainant and the Center by August 27, 2000. A copy of the said Notification was sent to the legal representative of the Complainant, ICANN and the registrar by e-mail.

On August 23, 2000, following the Respondent’s request of an extension of time of 20 days for filing of the Response, and having considered the comments of the representative of the Complainant, the Center granted the Respondent and extension of time of 10 days pursuant to Rule 5(d) of the Policy.

On September 6, 2000, the Center received the Response from the Respondent by e-mail and the hard-copy was received on September 19, 2000.

On September 6, 2000, the Center sent an Acknowledgement of Receipt of Response to the Respondent.

There followed an exchange of e-mail correspondence between the Center and the Parties relating to the filing of the Response by the Respondent.

On October 12, 2000, the Center received the Complainant’s request for consent to submit a supplemental submission pursuant to Rules 10(b),(d) and 12.

On November 17, 2000, having received Statements of Acceptance and Declarations of Impartiality and Independence from Jeffrey Samuels, Clive Thorne and James Bridgeman, the Center proceeded to appoint this Administrative Panel.

 

4. Factual Background

The Complainant has been in the publishing business for over twelve years. In 1987, the Complainant commenced publishing a magazine entitled "HISPANIC". Said magazine is a print magazine published monthly reporting on matters of interest to people of Hispanic descent. Over the years the Complainant has built the reputation of said magazine to a circulation of 250,000.

The Complainant is the registered owner of the following:

    1. U.S. trademark registration number 1,790,321 <HISPANIC> in international class 16 of the Register for "general interest magazine relating to Hispanic American culture". The application for said registration was filed on April 16, 1992 and the trademark was registered on August 31, 1993; and
    2. U.S. service mark registration number 2,035,155 <HISPANIC ONLINE> in international class 42 of the Register for "providing information via an on-line computer network regarding current topics of interest to hispanics, in class 42". The application for registration of said service mark was filed on October 4, 2000 and the servicemark was registered on February 4, 1997.

In 1995, the Complainant launched a web site at the domain name www.hisp.com. The Complainant posts back issues of the said "Hispanic" magazine, current events, articles and provides chat rooms and links to other sites of interest to people of Hispanic descent on said web site. Visitors to the said web site can also subscribe to the Complainant’s said "Hispanic" magazine.

The Respondent is a Peruvian company founded on July 15, 1999. The Respondent has maintained a bank account since 1999 and possesses a tax identification number, details of said bank account and tax number have been provided to this administrative panel.

 

5. Parties’ Contentions

A. Complainant

The Complainant submits that it is the owner of the trademark and service mark described supra.

The Complainant further submits that in July 1999, the Complainant learned that the said domain name <hispaniconline.com> had been registered by John Rodriguez [whose name the Panel notes is incorrectly referred to in the complaint as Rodriquez] on December 15, 1998 and subsequently the Complainant discovered that the said John Rodriguez had also registered <hispaniconline.net>.

On August 4, 1999 the Complainant contacted Mr Rodriguez and advised him that his use of the said trademark infringed the Complainant’s trademark rights. The Complainant requested Mr Rodriguez to cease use of the said domain names. Mr Rodriguez replied that he had not used said domain names in any commercial capacity, but refused to cease use of the said domain name or to disclose his plans for any future use of the said domain names.

The Complainant filed a complaint with the registrar pursuant to the registrar’s Dispute Resolution Policy. On October 26, 1999, the registrar informed Mr Rodriguez of the said complaint. On December 20, 2000, the registrar informed the parties to the said dispute that the Policy had been adopted by ICANN and the registrar declined to decide the dispute which had been instituted.

The Complainant subsequently contacted Mr Rodriguez in an attempt to reach an amicable solution to the dispute. According to the Complainant, Mr Rodriguez made an oral agreement to transfer the said domain names to the Complainant, however Mr Rodriguez transferred the said domain names to the Respondent instead.

The Complainant submits that Mr Rodriguez is the President of the Respondent.

In a further attempt to reach an amicable resolution, the Complainant offered to purchase the said domain names from the Respondent for a reasonable fee. The Respondent responded with an offer to purchase the Complainant’s trademark registrations.

The Complainant submits that the said domain names fully incorporate the Complainant’s <HISPANIC> trademark and <HISPANIC ONLINE> service mark. The said domain names are more than similar to the said registrations and are identical to the said <HISPANIC ONLINE> service mark with the exception of the ".com" and ".net" gTLD extensions.

The Complainant submits that the Complainant established trademark rights in the said <HISPANIC ONLINE> by promoting its own web site under the said <HISPANIC ONLINE> name and as a source indicator on the web site itself.

The Complainant submits that the registration of the said domain names seriously jeopardises the Complainant’s long standing investment in the said trademark and service mark and critically dilutes their value.

The Complainant submits that there is no doubt that Internet users will mistakenly believe that the said domain name is the address of the Complainant’s web site. In this regard, the Complainant refers to Panavision Int’l L.P. v. Toeppen 141 F. 3d 1316, 1327 (9th Cir. 1998) and Cardservice Int’l v. McGee 950 F. Supp. 737, 741 (E.D. Va. 1997) and submits that these decisions are authority for the principle that a customer is likely to assume that the Complainant’s <Hispanic Online> business is located at the URL <hispaniconline.com> and <hispaniconline.net.>.

The Complainant submits that the fact that the Respondent has not established a web site does not prevent the likelihood of confusion caused by the similarity of the said domain names and the Complainant’s trademark and service marks.

The Complainant submits that the Respondent has no rights or legitimate interest in the said domain names. The Complainant submits that the Respondent cannot demonstrate any of the three elements listed in Paragraph 4(c) of the Policy and there are no other grounds on which the Respondent can assert a legitimate interest in the said domain name.

Since the date of registration, the Respondent has not made any use of the said domain names other than to prevent the Complainant from using the said domain names that correspond to the said trademark and service mark. The Complainant submits that the Respondent has not made any demonstrable preparations to use the said domain names in connection with a bona fide offering of goods or services. In fact it is questionable whether the Respondent ever intends to use the said domain names.

The Respondent has not been commonly known by the said domain names and no legitimate use exists to which the Respondent can employ the domain names without infringing the Complainant’s trademark. In effect, the Respondent conceded as much by offering to purchase the Complainant’s trademark.

The Complainant submits that furthermore the Respondent is not making a legitimate non-commercial or fair use of the said domain names, without intent for commercial gain or intent to misleadingly divert consumers or to tarnish the said trademark and service mark. The Complainant submits that the Respondent's ownership of domain names identical to the Complainant’s trademark and service mark devalues the Complainant’s trademark and service mark.

The Complainant submits that the Respondent’s offer to buy the trademark belies the innocence of the Respondent’s possession of the said domain names. The said offer lends insight to the Respondent’s potential motive in holding the said domain names: to acquire the Complainant’s trademark at a discounted price; as the value of the Complainant’s trademark is diminished if the Complainant is unable to reflect the said trademark and service mark in a corresponding domain name.

The Complainant submits that the Respondent has registered and is using the said domain names in bad faith on a number of grounds.

The Complainant states that the Respondent has registered the said domain names primarily for the purpose of disrupting the business of a competitor, being the Complainant. Furthermore, the Complainant submits that the Respondent, by using a number of identities, has attempted to conceal the fact that it is a competitor of the Respondent.

The Complainant submits that, besides Ciber Surf E.I.R.L., Mr John Rodriguez is involved in Hispanic Enterprise.com, LLC, a New York limited liability company. Said company hosts a web site at <vamosonline.com> that competes for the same Internet traffic as the Complainant’s site. The Complainant has submitted a print-out of the registrar’s WHOIS database which identifies a Mr Rodriguez of Calle Olleros 4982, Urb. El Parque, Del Naranjal, Los Olleros, Lima with an e-mail address at cibersurf2000@yahoo.com as the administrative contact for the registration <hispanicenterprise.com>. The Complainant submits that there is a connection between the Respondent, said Mr Rodriguez, the said <hispanicenterprise.com> domain name registration and the domain name registration <vamosonline.com>. The Complainant submits that although said web site <vamosonline.com> is not fully operational, it will in due course compete with the Complainant’s web site.

The Complainant submits that because said Mr Rodriguez is holding said <hispaniconline.com> and <hispaniconline.net> domain names, in an inactive state, with no web site associated with them, an Internet user seeking to contact the web site associated with the said domain names, receives an error message when the attempt fails. Seeing an error message, a potential visitor may conclude that the Complainant does not have a web site presence or that the Complainant maintains an unreliable web site of poor quality. Such confusion would be harmful and disruptive to the Complainant’s business.

The Complainant further submits that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its on-line location (vamosonline.com), by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the said location. The Complainant states that it has invested significant resources in promoting the <HISPANIC ONLINE> trademark. As Internet users, who type-in the Complainant’s said trademark followed by ".com" or ".net", are not directed to the Complainant’s site, it is argued that such users will presumably continue their search elsewhere for the Complainant’s site and many of these people will become confused and may end up by visiting the Respondent’s competing <vamosonline.com> web site.

The Complainant further submits that users of the Internet may believe that there is some affiliation between the Complainant and the Respondent’s said web site since Mr Rodriguez is listed in the respective WHOIS databases as being affiliated with said <hispaniconline.com> and <hispaniconline.net> domain names as well as <hispanicenterprise.com> <cibersurf.com> and <vamosonline.com>.

The Complainant submits that by passively holding the said domain names the Respondent is preventing the Complainant, with a legitimate interest in the name from using the said domain name. In Telstra Corp. Ltd. v. Nuclear Marshmallows (WIPO Case No. D2000-0003, February 18, 2000) the administrative panel stated: "[P]aragraph 4(b) recognises that inaction (e.g. passive holding) in relation to a domain name registration can, in certain circumstances, constitute a domain name being used in bad faith. Furthermore, it must be recalled that the circumstances identified in Paragraph 4(b) are "without limitation" – that is, Paragraph 4(b) expressly recognises that other circumstances can be evidence that a domain name was registered and is being used in bad faith."

The Complainant supports this argument by reference to the decision of the administrative panel in Cyro Industries v Contemporary Design, (WIPO Case D2000-0336, June 19, 2000) wherein it is submitted by the Complainant, the administrative panel decided that the passive holding of a domain name is prima facie evidence of registration and use in bad faith.

The Complainant submits that the reasoning of the administrative panel has been followed or acknowledged by other administrative panels in at least 25 subsequent cases, and that subsequent administrative panels have built on this foundation and identified other circumstances where a finding of bad faith is warranted viz.

    1. registration of a domain name with notice of the trademark owner’s interest in the name;
    2. registration of a domain name using a pseudonym or the name of a non-existent company;
    3. failure to commercialise the domain name during the initial registration period or during a reasonable period of time;
    4. using the said domain name as an element of negotiation to secure concessions from the trademark owner on other issues; and
    5. continuing to maintain a domain name which causes Internet users to believe that a complaint does not have a web site presence.

The Complainant submits that the said domain names were registered by the Respondent, despite having constructive notice of the Complainant’s trademark interests. The Respondent registered <hispaniconline.com> and <hispaniconline.net> long after the Complainant had registered the said <HISPANIC ONLINE> trademark on the U.S. Principal Register. Said U.S. federal registration constitutes constructive notice of the Complainant’s claim of ownership. In this regard the Complainant refers to the decision of the administrative panel in The Step2 Co. v. Softastic.com Corporation (WIPO Case D2000-0393, June 26, 2000).

The Complainant submits that the Respondent has violated Paragraph 5 of the service agreement applicable to the said domain name registrations by failing to provide complete and accurate information as part of the application process. The service agreement does not provide any provision whereby the applicant may provide a false name or otherwise maintain anonymous registration. The said domain names were registered in the name of John Rodriguez. Other correspondence indicates that he goes by the name Giancarlo Rodriguez. The Respondent has also communicated with the Complainant via e-mail identified as Melissa Salazar. In these submissions the Complainant is maintaining that the Respondent is in fact Mr Rodriguez and that he transferred the said domain names as an evasive tactic to a Peruvian company which he presumably owns. The Complainant submits that the Respondent’s attempts to conceal his identity are further evidence that the said domain names were registered in bad faith.

The Complainant submits that the Respondent is engaging in domain name parking. Over a year and a half has elapsed since the said domain names were first registered. In that time the Respondent has made no demonstrable preparations to use the said domain names in connection with a bona fide offering of goods and services. The Complainant submits that a registrant should be given sufficient time to make preparations to use a registered domain name, but "parking" of a domain name is evidence of bad faith registration and use. In this regard the Complainant referred to earlier decisions of administrative panels in Chernow Communications Inc. v. Jonathan D. Kimball, (WIPO Case number D 2000-0119, May 18, 2000) citing Beverages and More Inc. v. Glenn Sobel Management (e-Resolution case number AF-0092, March 9, 2000). The Complainant submits that the Respondent’s failure to commercialise the said domain names is evidence of bad faith.

The fact that the Respondent offered to purchase the Complainant’s trademark in response to the Complainant’s offer to purchase the said domain name registrations is stated by the Complainant to be evidence that the Respondent is using the said domain name registrations as a bargaining chip or as an economic weapon. The Complainant submits that this is further evidence that the Complainant registered and is using the said domain names in bad faith and refers to the decision of the administrative panel in Westfield Corporation Inc. and Westfield Limited v. Graeme Michael Hobbs (Dynamic Marketing Consultants) , (WIPO Case No. D 2000-0227, May 18, 2000) in support of this argument.

In conclusion the Complainant submits that the Respondent is creating a likelihood of confusion and injury to the Complainant’s reputation by creating a situation whereby the said error message is generated in the circumstances described above. Given the circumstances described above, the Complainant submits that the Respondent is intentionally using the said domain names to confuse and injure the Complainant’s reputation.

B. Respondent

The Respondent states that the Complainant is engaged in Reverse Domain Name Hijacking. The Respondent submits that the Complainant has failed to prove that the Respondent has no rights or legitimate interest in the said domain name or that the Respondent has registered and is using the said domain name in bad faith.

Contrary to the Complainant’s allegation, the Respondent can prove in accordance with Paragraph 4(c) of the Policy, that there are grounds on which the Respondent can assert a legitimate interest in the said domain names.

On October 5, 1999, the Respondent applied to register a Peruvian trademark in International Class 38 for the mark <HISPANIC ONLINE> and said trademark was registered on December 27, 1999. The Respondent submits that the said registration is distinctly different from the Complainant’s registration in class 42, as they are each in different classes indicating that the parties operate in different channels of trade. Furthermore the services offered by the Parties are quite distinct as they are in different countries and are substantially different from one another in both language and culture.

On January 31, 2000 the Respondent registered the said domain names. The said domain names are identical to the Respondent’s <HISPANIC ONLINE> trademark with the exception of the ".com" and ".net" gTLD extensions. Since 1999, the Respondent has registered other domain names viz. <cibersurf.com>, <hispaniconline.cc> , < hispaniconline.co.uk>. The Respondent submits that the registration of the said domain names and the said domain names in issue in these proceedings were made in good faith.

The Complainant publishes several publications including Hispanic Magazine and Vista Magazine. Both of these magazines are distributed exclusively in the USA. The Respondent submits that the Complainant’s said trademark <HISPANIC ONLINE> is not a famous mark and there is no evidence submitted by the Complainant that it advertises its publications outside the territory of the USA.

The Complainant has offered no evidence of marketing projects for their trademark in other English speaking countries, neither has the Complainant submitted any evidence of any marketing plans for the said <HISPANIC ONLINE> trademark in Spanish speaking countries. Accordingly the Complainant’s trademark has not acquired the character of a famous mark in the world, particularly in South America and more particularly in Peru.

The Complainant’s customers have become accustomed to typing the http://www.hisp.com address when accessing the Complainant’s web site. Evidence that the Complainant registered the said <hisp.com> domain name in 1995 indicates that the Complainant had full knowledge of the Internet for nearly five years prior to the Respondent’s registration of the said domain names. The Respondent submits that this establishes that the Complainant purposely decided not to register the said domain names. Furthermore only recently did the Complainant register the domain name <hispanicmagazine.com> via a registrar in Australia.

When the registrar indicated that it would not determine the dispute between the Complainant and Mr Rodriguez, the Complainant had a four week period prior to the termination of the said dispute on January 31, 2000 to commence proceedings under the Policy. The Complainant chose not to do so. Mr Rodriguez did not promise to transfer the said domain name to the Complainant at that time and the Complainant is seeking to mislead this Administrative Panel in claiming that there was such an agreement.

The Respondent submits that the Complainant’s name does not incorporate the words <HISPANIC ONLINE>, that the Complainant does not use the encircled letter r symbol in connection with the said trademark, that the Complainant has continuously marketed its services in association with the <hisp.com> domain name and for that reason the Complainant’s trademark has not become a famous mark and there is no likelihood that Internet users would be confused by the Respondent’s use of the said domain names.

The Respondent submits that its web site accessible via said domain names is functional and in use. The Respondent has submitted translations of correspondence which purports to be evidence that consumers in Peru have located the Respondent at the said addresses.

The Respondent asserts that in accordance with Paragraph 4(b) of the Policy, the Respondent can establish a legitimate interest in the said domain names. In this regard the Respondent refers to its abovementioned Peruvian trademark registration, which it argues pre-dated any formal notice of the dispute with the Complainant regarding the said registrations. Similarly the Respondent refers to the fact that it had commenced commercial activity, and developed a business plan in 1999 prior to the initiation of these Administrative Proceedings.

The Respondent states that throughout its existence, it has been known by the name Ciber Surf E.I.R.L. and also by the trademark <HISPANIC ONLINE> in Peru. The Complainant has not demonstrated that it has any reputation or rights in Peru and the Respondent submits that it has not infringed the Complainant’s trademark. Furthermore the Complainant’s said registrations are in a different class in respect of different specification of goods and services from those covered by the Respondent’s registration.

The Complainant’s primary objective is to harass the Respondent and the Respondent has set out a detailed account of the negotiations between the Complainant and Mr Rodriguez in this regard (Response page 8-9).

With regard to the Complainant’s allegation that the Respondent has registered and is using the said domain name in bad faith, the Respondent submits that the Complainant has not established that the Respondent is engaging in business disruption of a competitor. The Respondent submits that the Complainant has not established that the Respondent is a competitor of the Complainant. In this regard the Respondent points to the fact that the abovementioned respective trademark registrations of the Complainant and the Respondent are in different classes. The Complainant’s goods and services are marketed in the USA only.

The Respondent submits that Mr Rodriguez initially registered said domain names in good faith. He chose the domain name to reflect his ethnicity and his desire to create a personal web site for himself. Mr Rodriguez has never offered the said domain names for sale or transfer, nor is he interested in the sale of the said domain name registrations.

The Respondent denies that it has any affiliation with HispanicEnterprise.com LLC. The Respondent is not the owner of the registration for <vamosonline.com>. The Respondent has never participated in the marketing of <vamosonline.com>. The words "vamos online" translated into the English language mean "let’s go online" and this is quite distinct from the said <hispaniconline.com> and <hispaniconline.net.> domain names in terms of pronunciation, the words themselves and their meaning.

In support of these submissions the Respondent has provided information regarding certain applications for registration of trademarks by said HispanicEnterprise LLC.

Furthermore the Respondent has cited the decisions in Credit Management Solutions, Inc. v. Collex Resource Management (WIPO Case No. D2000-0029, March 17, 2000) and Primedia Special Interest Publications, Inc. v. John L. Treadway (WIPO Case No. D2000-0752, August 21, 2000).

The Respondent has never directed any other domain name to its site other than <hispaniconline.com>, <hispaniconline.net>. The Respondent has only registered the domain names , hispaniconline.cc, hispaniconline.co.uk and cibersurf.com as related to its business objectives.

The Complainant has registered many trademarks such as <HISPANIC 100>, <HISPANIC>, <HISPANIC ENTREPRENEUR>, <LATINA EXCELLENCE AWARDS>, <MODERNA> and <VIDA>, but has not registered corresponding domain names.

The Respondent rejects the allegation made by the Complainant that Internet users will fail to find the Complainant due to the registration of the said domain names by the Respondent. In this regard the Respondent points to the fact that the Complainant claims to have had 250,000 hits per month at its <hisp.com> web site.

The Respondent rejects the Complainant’s submission that it has established that the said domain names have been registered and are being used in bad faith under "the Telstra doctrine". The Respondent submits that it has not infringed the Complainant’s trademark rights and in fact the application to register the said <HISPANIC ONLINE> trademark in Peru proceeded unopposed by the Complainant or anyone else.

The Respondent has submitted copies of e-mails exchanged between Mr Rodriguez and a person formerly employed by the Complainant’s and submits that these exchanges demonstrate that the Complainant’s said employee gave the Mr Rodriguez oral permission to in April or May 1999 to utilise the said domain names in any commercial capacity.

The Respondent submits that the Respondent never sought to conceal its identity and this is accepted by this Administrative Panel.

The Respondent rejects the Complainant’s submission that it has parked the said domain names. The Respondent submits that it had only six months from the date of registration and in that period the Respondent’s representative Mr Rodriguez has spend much of that time travelling between Lima and the USA. In that time the Respondent prepared a business plan associated with a bona fide offering of goods and services. Furthermore the Respondent has marketed the said domain names throughout Peru.

The Respondent also rejects the Complainant’s submissions that the Respondent has used the said domain names as a bargaining tool. The Respondent submits that the Complainant saw no value in its Internet service department and refers again to the said correspondence between Mr Rodriguez and the said former employee of the Complainant company in which the said former employee stated that he had been told by his superior in the Complainant’s organisation that he was not in the Internet business, that he was in the magazine business and that he was not going to put any money into the Internet business of the Complainant. The Respondent submits that the attitude of the Complainant to its Internet business demonstrates that the Complainant does not really believe that it is necessary for companies like the Complainant to have a strong Internet presence.

In conclusion, the Respondent submits that it has established rights and legitimate interest in the said domain names as indicated above. In support of this claim the Respondent has cited the decision of the administrative panel in Fuji Photo Film Co. Limited and Fuji Photo Film USA Inc. v. Fuji Publishing Group LLC (WIPO Case No. D2000-0409, July 2, 2000) in which the Respondent submits the administrative panel decided that the Complainant had not met the burden of proof as the Respondent offered goods and services different to those goods and services in which the Complainant had rights.

In Cellular One Group v. Vanguard Cellular Systems, Inc. (WIPO Case No. D2000-0268, May 30, 2000), the Respondent submits that the administrative panel concluded that the Respondent had rights in respect of the disputed domain name due to permission or consent granted by the Complainant to the Respondent and therefore the Complainant had not overcome the burden to show that the said domain name violated either Paragraph 4(a)(ii) or 4(a)(iii) of the Policy.

In GA Modefine S.A. v. Sparco P/L (WIPO Case No. D2000-0419, August 13, 2000) the Respondent states that the administrative panel concluded that the Complainant had not established that its trademarks were renowned because the Complainant failed to provide any evidence that the Complainant’s trademarks were registered in Australia, being the jurisdiction where the Respondent was located.

In Digitronics Inventioneering Corporation v. @Six.Net Registered (WIPO Case No. D2000-0008, March 1, 2000), the Respondent submits that the administrative panel concluded that the Respondent should be entitled to the protection of Paragraph 4(c)(iii) and that the complainant had failed to show that the Respondent had no rights or legitimate interest in respect of the said domain name. The administrative panel concluded that the Respondent had established that it is commonly known by the domain name.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy places on the Complainant the onus of proving that:

  1. the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
  2. the Respondent has no rights or legitimate interests in respect of the said domain name;and
  3. the said domain name has been registered and is being used in bad faith.
  • The said domain names have been registered and are being used in bad faith.
  • This Administrative Panel is satisfied that the Complainant has established the first part of the test and that the said domain names are identical or confusingly similar to the Complainant’s said registered service mark <HISPANIC ONLINE>.
  • With regard to the Respondent’s rights or legitimate interest in the said domain names the chronology of the dispute leads this Administrative Panel to conclude that the Respondent was aware that the Complainant was in dispute with Mr Rodriguez on the date when the Respondent was formed. The Complainant has submitted that said Mr Rodriguez formed the Respondent company, but has not provided any evidence of this. It is clear from the Respondent’s submissions however that said Mr Rodriguez has a strong connection with the Respondent company and has been described in the Response as the representative of the Respondent.
  • Furthermore on the date on which the Respondent applied for registration of the said trademark in Peru, and at all material times when the Respondent was engaged in use of the said trademark <HISPANIC ONLINE> and the said domain names, the Respondent was aware that the Complainant had sought transfer of the said domain names from Mr Rodriguez.
  • This Administrative Panel decides that since the Respondent acquired the said registrations by way of transfer from Mr Rodriguez, if the principle nemo dat quod non habet is applied, Mr Rodriguez could not transfer any rights or legitimate interest in the said domain names in excess of the rights that he had. It is clear that Mr Rodriguez had no rights or legitimate interest in the said domain names.
  • This Administrative Panel does not accept the Respondent’s claim that it acquired rights prior to the formal notification of the dispute. In the particular circumstances outlined in this case, the significant date was the date on which the Complainant sent the cease and desist letter to Mr Rodriguez.
  • With regard to the question of registration and use in bad faith, this Administrative Panel has considered the copies of e-mails exchanged between said Mr Rodriguez and the person formerly employed by the Complainant (annex 17) and rejects the Respondent’s submission that these exchanges demonstrate that the Complainant’s said employee gave Mr Rodriguez oral permission in April or May 1999 to utilise the said domain names in any commercial capacity.
  • On the other hand however this Administrative Panel notes that the fact that Mr Rodriguez was in contact with the Complainant’s organisation, demonstrates that he had notice of the Complainant’s said <HISPANIC ONLINE> trademarks. Furthermore the fact that Mr Rodriguez was in contact with the Complainant’s organisation in this period demonstrates that the Respondent is incorrect in its claim that Mr Rodriguez registered the said domain names merely to reflect his ethnicity and to establish a personal web site.
  • On the evidence submitted by both parties, on balance, this Administrative Panel concludes that Mr Rodriguez registered and used the said domain name in bad faith as he has connections with the Respondent and with said HispanicEnterprise LLC. It seems clear that the said HispanicEnterprise LLC is a competitor of the Complainant. They are engaged in the same field of activity namely the provision of news of interest to Hispanic groups. Furthermore, Mr Rodriguez certainly had actual knowledge of the Complainant’s Internet services and the fact that although its domain name was <hisp.com>, it owned and used both <HISPANIC> and <HISPANIC ONLINE> registered trademarks and service marks in the USA. He furthermore had constructive knowledge of the said registrations. Therefore up until the date on which the said domain names were transferred to the Respondent, Mr Rodriguez had no rights or legitimate interest in the said domain names.
  • It seems clear that the Respondent company was formed, by Mr Rodriguez or by persons associated with him, in the knowledge that there was a dispute in existence between the Complainant and the said Mr Rodriguez. Furthermore this Administrative Panel is satisfied that the Respondent applied to register the said Peruvian trademark in order to strengthen its hand in any proceedings to transfer the said domain names. Furthermore the Respondent commenced its business activities in Peru at a time when it was actually aware that the Complainant was in dispute with Mr Rodriguez with regard to the said domain name registrations.
  • This Administrative Panel distinguishes between the Respondent’s rights in the said Peruvian trademark and the Respondent’s rights in the domain names. Consideration of the former is beyond the jurisdiction of this Administrative Panel. However with regard to the latter, this Administrative Panel is satisfied that the Respondent registered the said domain names in bad faith.
  • Furthermore this Administrative Panel is satisfied that in failing to commercialise the said domain names the Respondent is using the said domains in bad faith.

 

7. Decision

With specific reference to Paragraphs 4(i) of the Policy and Paragraph 15 of the Rules this Administrative Panel decides that the Respondent has registered the domain names <hispaniconline.com> and <hispaniconline.net> which are identical or confusingly similar to a trademark and service mark in which the Complainant has rights, that the Respondent has no rights or legitimate interest in respect of said domain names and that the Respondent has registered and is using said domain names in bad faith. Accordingly, this Administrative Panel decides that said domain names <hispaniconline.com> and <hispaniconline.net> should be transferred to the Complainant.

 


 

James Bridgeman
Presiding Panelist

Jeffrey M. Samuels
Panelist

Clive Duncan Thorne
Panelist

Dated: December 18, 2000


CONCURRING OPINION

I concur in the Panel's decision. However, contrary to the majority, I would not reach the issue, under paragraph 4(c)(i) of the Policy, of when "notice" of the dispute took place. Whether "notice" took place when the Complainant sent the "cease and desist" letter to Mr Rodriguez, as the majority finds, or took place some other time, it seems to me that Respondent has failed to establish either use of, or demonstrate preparations to use, the domain name. Thus, in my view, this portion of the Policy is not applicable under any circumstance.

I also wish to emphasize that my view of the outcome of this dispute may have been different if the facts showed simply that Respondent obtained its Peruvian registration even with knowledge of Complainant's trademark rights. In such circumstance, Respondent may have been able to establish that it has been commonly known by the domain name, within the meaning of paragraph 4(c)(ii) of the Policy. In this case, however, there is no evidence that Mr Rodriguez, Respondent's assignor, was commonly known by the domain name, and it is a well-accepted legal principle that an assignee can acquire no better rights than its assignor.

 

 


 

 

Jeffrey M. Samuels
Panelist

Dated: December 18, 2000

 

Источник информации: http://www.internet-law.ru/intlaw/udrp/2000/d2000-0860.html

 

Добавить эту страницу в закладки:

 


 

Произвольная ссылка:

Разработка сайта
ArtStyle Group

Уважаемый посетитель!

Вы, кажется, используете блокировщик рекламы.

Пожалуйста, отключите его для корректной работы сайта.