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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Todito.com, S.A. de C.V. v. Francisco Gómez Ceballos
Case No. D2002-0717
1. The Parties
The Complainant is Todito.com, S.A., Col. Tlalpan La Joya, México, D.F., C.P. 14000, México. The Complainant is represented by John A. Thomas, Glast, Phillips & Murray, P.C., Dallas, Texas 75140, United States of America.
The Respondent is Francisco Gómez Ceballos, Puerto Vallarta, Jalisco, C.P. 48350 Mexico.
2. The Domain Name and Registrar
The domain name at issue is <toditomail.com>.
The Registrar is BulkRegister.com, Inc., addressed at 10 East Baltimore Street Suite 1500, Baltimore MD 21202, United States of America.
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received the Complaint on July 29, 2002, (electronic version) and August 1, 2002, (hardcopy). The Center acknowledged receipt of the Complaint on July 30, 2002.
On July 30, 2002, the Center sent a Request for Registrar Verification to the Registrar of the disputed domain name. The Registrar submitted a response to the Center on the same day. The Registrar confirmed that it had received a copy of the Complaint, that Francisco Gómez Ceballos was the Registrant for the domain name <toditomail.com> and that the said name was registered with Registrar. Full Whois contact details regarding the said domain name were provided to the Center by the Registrar.
On August 5, 2002, pursuant to Paragraph 4(a) of the Rules for Uniform Domain Names Disputes Resolutions Policy (the "rules") and Paragraph 5 of the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy, (the "Supplemental Rules"), the Center notified Complainant its verification that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy, approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution (the "Rules") and the Supplemental Rules; the Center also confirmed that payment was made by the Complainant.
On August 5, 2002, according to Paragraph 2(a) of the Rules, the Center notified Respondent by courier, fax and e-mail (to the postal address, fax number and electronic address provided by Respondent to Registrant and published on the relevant Whois database) of the commencement of this proceeding. According to Paragraph 4(c) of the Rules, the formal date of the commencement of this proceeding was August 5, 2002. Pursuant to Paragraph 5(a) of the Rules, the deadline for submitting a Response was August 25, 2002.
On August 22, 2002, Respondent contacted by phone a Case Administrator from the Center. The telephone conversation was confirmed in writing by the said Case Administrator and sent to Respondent and Complainant. The most relevant questions raised by Respondent (with the answers thereto, provided by the Case Administrator) are transcribed hereinbelow:
1) Respondent asked whether he could send an e-mail to the Center in Spanish. It was understood by the Center that Respondent was requesting to file his response in Spanish.
The Case Administrator advised Respondent that as the Registration Agreement is in English and the proceedings have been in English, it would be necessary to file the response in English. Such Administrator also advised Respondent that should the Response be filed in Spanish, it would have to be translated into English. The Administrator noted that if the response was filed in Spanish and not translated into English, the panelist would be under no obligation to consider it. Such Administrator referred Respondent to Article 11 of the Rules, which states the following:
"11. Language of Proceedings
(a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
(b) The Panel may order that any documents submitted in languages other than the language of the administrative proceeding be accompanied by a translation in whole or in part into the language of the administrative proceeding."
2) Respondent asked whether "the Center would write to the Complainant to insist that, within five days, the Complainant submit proof that Respondent had no right to register the domain name."
The Case Administrator advised Respondent that the Complaint had already been filed and that the Center had no authority under the Rules to request Complainant to add anything or change the Complaint in any way, particularly since supplemental filings are not allowed under the Rules unless the panelist requests them.
On August 30, 2002, the Center sent to the Respondent, via e-mail, a Notification of Respondent Default. No response has been received up to the date of drafting the decision.
On September 19, 2002, the Center notified the parties that an Administrative Panel ("the Panel"), consisting of a sole member panelist, i.e. Kiyoshi I. Tsuru, had been appointed and that the panelist had submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center. October 3, 2002, was set as the deadline for the Panel to forward its decision to the Center.
After reviewing the complete record relating to this proceeding, the Panel agrees with the Center in that the Complaint is now in compliance with the Policy, the Rules and the Supplemental Rules. The sole Panelist further finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules. The Panel also finds that, pursuant to paragraph 2 a) of the Rules, the Center has employed "reasonably available means calculated to achieve actual notice to Respondent" of this proceeding, and thus, finds the communications and notifications given by the Center valid. In accordance with paragraph 11 of the Rules, and considering that Registrar’s Registration Agreement is written in English, this proceeding has been conducted in English.
4. Factual Background
The Panel finds that the following facts appear from the Complaint and documents submitted with the Complaint and have not been disputed by the Respondent (see Randstad General Partner (U.S.), LLC v. Domains For Sale For You, WIPO Case No. D2000-0051, March 24, 2000).
A. The Complainant
The Complainant is Todito.com, S.A. de C.V., (see supra point 1), a Mexican corporation, having its principal place of business in Mexico, D.F., Mexico. Complainant renders Internet content and connectivity services. Through its "portal" website addressed at "<"www.todito.com"">, Complainant provides the following services: presentation of news and entertainment, electronic mail, chat and bulletin board services, and hosting of business and home web pages. Complainant states that it registers more than three million average daily page views at its website, and that it has spent more than USD $12,000,000.00 in advertising this website since 1999.
Complainant is the owner of United States federal trademark registration, No. 2,554,685 "TODITO.COM" (Filed: October 13, 1999; granted: April 2, 2002). Complainant asserts that it began using the trademark TODITO.COM on August 15, 1999.
Complainant uses TODITOMAIL for its electronic mail service. The "<"www.todito.com">" home page links to a page promoting the mail service. The Panel has verified this fact.
B. The Respondent
The Respondent registered the domain name <toditomail.com> on June June 13, , 2001.
5. Parties’ Contentions
Complainant claims to be the owner of the trademarks TODITO.COM and TODITOMAIL.
The Complaint is mainly based upon Complainant’s U.S. federal trademark registration No. 2,554,685 "TODITO.COM" (see supra point 4) and Complainant’s claim of rights to the trademark TODITOMAIL.
Complainant asserts that it began use of the TODITO.COM mark on August 15, 1999, and has used it continuously since that time, and long prior to Respondent's registration of <toditomail.com>.
Complainant claims that TODITOMAIL has been in use since October 13, 1999, prior to Respondent's registration of <toditomail.com>, and that to date, Complainant has invested more than USD $ 3,000,000 in building and promoting the services represented by TODITOMAIL. Complainant now has more than 630,000 subscribers to its mail service.
Complainant asserts that "[b]By simple inspection, it is plain the second-level domain name registered by Respondent is identical to Complainant's mark TODITOMAIL."
Complainant goes on by saying that "[t]he domain name registered by Respondent is confusingly similar to Complainant's TODITO.COM mark, because it literally incorporates the distinctive portion of Complainant's registered trademark; that is, TODITO. TODITO, meaning "a little bit of everything" in English, is a fanciful play on words, suggestive of Complainant's services, but not descriptive. Such marks are deemed inherently distinctive and are entitled to protection without proof of acquired distinctiveness.
Complainant further states the following: "Respondent has incorporated the distinctive portion of Complainant's mark into a combination adding only the word "mail", that "[t]he likelihood of confusion is high were the portion common to both marks has inherent distinctiveness, but the additional portion is descriptive or generic. Such is the case here: TODITO is inherently distinctive, but MAIL is descriptive [of] electronic mail services. The additional portion merely imparts information about the services, but not the source"
Complainant alleges that "the already high risk of confusion is made even greater because the domain name <toditomail.com> necessarily refers to services delivered by means of the Internet" and that therefore, "consumers seeing Respondent's site on the Internet would be even more likely to believe Respondent's site was owned by, or sponsored by, the Complainant"
Lack of Respondent’s rights or legitimate interests
Complainant declares that it "has not given Respondent any right to use the disputed domain name" and that "Respondent obviously had actual knowledge of Complainant’s prior use of, and rights in, the TODITO.COM and the TODITOMAIL marks"
Complainant further states that "Respondent's domain name resolves to a page titled: ‘Welcome : Mexico's Best Travel Guide Website :: By the Experts!’" and provides a printout thereof.printout thereof.
Complainant has submitted evidence showing that the domain name "www.myfriendinmexico.com", which appears on the text of the above printout, is registered on behalf of Respondent.
Complainant has also submitted a printout of another section of the site to which the domain name <todito.mail.com> resolved, wherein the following phrase can be read: "Bienvenido a mail MyFriendinMexico la forma más cómoda de enviar y recibir tus e--mails desde cualquier sitio y desde cualquier computadora. Todo a través de una web fácil, intuitiva y en español." Complainant has furnished an English translation of this phrase: "Welcome to MyFriendinMexico mail, the most convenient form to send and receive your emails, from whatever location and from whatever computer. All through an easy, intuitive web, and in Spanish."
Complainant has submitted yet another section of the abovementioned site. This section is entitled "Web Travel Guide-By The Experts. Bienvenidos a MyFriendinMexico". The text of such site is written mostly in Spanish, and it contains, inter alia, the following phrases: "We, the tourism experts of the country certified by the Mexican Secretary of Tourism (SECTUR), have developed this cyber magazine to promote, increase and facilitate the fulfillment of the work of all tour guides." "MyFriendinMexico provides a wide range of electronic services that are directed as much to our tourist friends as for ourselves, the certificated guides."
Complainant states that Respondent is an individual, and, to the knowledge of Complainant, Respondent has never been known by the domain name, as an individual, business, or other organization."
Bad faith Registration and Use
Complainant states that "Respondent had actual notice of Complainant's use of, and rights in the trademarks at issue[…] both before and after his registration of the disputed domain name."
Complainant asserts that "Respondent could have searched the U.S. federal trademark registration database available on line at "http://www.uspto.gov/web/menu/tm.html", and found the TODITO.COM pending application and the ultimate registration." (See supra point 4).
Complainant claims that it has clearly shown that "Respondent is using the domain name to draw users to his website "www.myfriendinmexico.com", where Respondent offers at least two services", i.e., 1) an electronic mail service, service which directly competes with Complainant and 2) advertising for certified tour guides. Complainant has submitted evidence regarding both services. According to such evidence, Respondent provided the users of his e-mail service with a username and password; Respondent also had a "Tourguide search" link which lead to a web page with a "list of tour guides with photographs, contact information and specialties of the several guides." Complainant alleges that "[c]learly, Respondent is using Complainant's marks to draw visitors to this [latter] page as well." Complainant continues by saying that it "does not know Respondent's exact business relationship with the tour guides […], but the only reasonable conclusion is that Respondent receives some economic benefit from this advertising, and thus is attracting users to his site for commercial gain."
Complainant argues that Respondent registered the disputed domain name for the purpose of selling it to Complainant for a sum in excess of out-of-pocket costs. Complainant’s attorney asserts that he sent an e-mail letter to Respondent, setting out Complainant’s claim to ownership of <toditomail.com> and offering to pay Respondent his out-of-pocket costs for registering the domain name, in return for transfer of the domain name to Complainant. Complainant further states that at the time of the filing of the Complaint which gave rise to this proceeding, neither Complainant or its attorney had received any response from Respondent.
It is Complainant’s assertion that it is being damaged by "the existence of the disputed domain in Respondent's hands", due to the fact that "[c]ustomers unsure about a particular domain name would guess that the domain name was also the company's name or the name of a service of the company" [citing Panavision Int'l, L.P. v. Toeppen, 141 F.3d 1316, 1327 (9th Cir. 1998)].
Complainant’s final contention is that "registration of a domain name similar or identical to a highly distinctive mark is evidence of bad faith, because the distinctive nature of the mark reduces or eliminates any claim that the registrant's infringement was innocent." [Citing Reuters Limited v. Global Net 2000, Inc,. WIPO Case No. D2000-0441, July 20, 2000].
The Respondent has not submitted a Response according to Paragraph 5 of the Rules.
6. Discussion and Findings
In accordance with the Uniform Domain Name Dispute Resolution Policy ("the Policy"), paragraph 4(a), the Complainant must prove that:
"(i) the domain name in question is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name, and
(iii) the domain name has been registered and is being used in bad faith."
In the administrative proceeding, the Complainant must prove that each three of these elements are present.
As the Respondent has failed to submit a response to the complaint, the Panel may accept as true all of the allegations of the complaint. Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk, WIPO, WIPO Case No. D2002-0487, August 12, 2002; Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009, February 29, 2000.
Regarding Complainant’s assertion of ownership to the trademarks TODITO.COM and TODITOMAIL, the Panel has found the following:
a) TODITO.COM. Complainant has provided sufficient evidence to support its assertion of ownership of an exclusive right to use this sign, namely, the existence of a federal U.S. trademark registration: Reg. No. 2,554,685 "TODITO.COM" (see supra points 4 & 5).
b) TODITOMAIL. Complainant claims ownership of this trademark. It alleges to have been using the mark since October 13, 1999, to have invested more than USD $ 3,000,00 in building and promoting the services represented by TODITOMAIL and to have more than 630,000 subscribers to its mail service. Under Mexican Law, which is the law of the domiciles of Complainant and Respondent, and the country where one of Complainant’s markets is located, there can be no ‘ownership’, i.e., the exclusive right to use a trademark, based solely on use; registration is necessary: "The industry, merchants and service providers may use marks in the industry, commerce and services that they offer/render. Nevertheless, the exclusive right to use [such marks] shall be obtained by means of registration thereof before the [Mexican] Institute [of Industrial Property.]" Article 87 of the Mexican Law of Industrial Property [emphasis added].
Complainant could have claimed common-law rights to this trademark, under the law of the United States of America, which has sufficient contacts with Complainant, due to Complainant’s business in the U.S. and the large Spanish-speaking market of the U.S., which Complainant aims to. "Under U.S. law, actual use of a designation as a mark creates rights and priority over junior users." United Artists Theatre Circuit, Inc. v. Domains for Sale Inc., WIPO Case No. D2002-0005, March 27, 2002, (citing J. Thomas McCarthy, McCarthy on Trademarks § 16.4 (2001). However, Complainant has not claimed common-law rights to this mark and has not submitted sufficient evidence to show use of the trademark TODITOMAIL in commerce, within the territory of the U.S. Complainant has not provided either any proof of registration of the said trademark in Mexico (see previous paragraph) or the U.S. Therefore, this Panel finds that Complainant has not proven to hold exclusive rights over the trademark TODITOMAIL.
(i) Identical or confusingly similar
The domain name <toditomail.com> is confusingly similar to Complainant’s trademark TODITO.COM. The domain name incorporates the mark TODITO.COM which is a distinctive mark. The term "mail" added as a suffix, does not change the overall impression of the designation as being a domain name connected to the Complainant. The domain name has a strong likelihood with TODITO.COM.
The relevant consuming public, i.e., that conformed by North-American Spanish speakers (in Mexico and the U.S.) is familiarized with the trademark TODITO.COM, for it is normally advertised on Mexican Television (which is broadcasted throughout the Mexican Territory and some cities within the U.S.) There is reason to believe that the public, when reading or hearing the domain name <toditomail.com>, will believe that the domain name is owned by, or related to, the Complainant. The result may therefore be that the disputed domain name would be associated in the minds of the consumers with Complainants’ trademark so that a risk of confusion is likely.
Numerous ICANN decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. See for example the following decisions: Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615, August 27, 2002; Compagnie Générale des Etablissement MICHELIN v. Lost in Space, SA, WIPO Case No. D2002-0504, August 1, 2002; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, November 6, 2001 ; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525, January 29, 2001; Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000--0047, March 24, 2000; Toyota France and Toyota Motor Corporation v. Computer-Brain, WIPO Case No. D2002-0002, March 22, 2002, and Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd, WIPO Case No. D2000-0802, September 9, 2000.
More importantly, the term "MAIL" is so closely associated with Complainant’s services (presentation of news and entertainment, electronic mail, chat and bulletin board services, and hosting of business and home web pages –see supra point 4), that the combination of such term with the trademark TODITO.COM cannot be but confusing (paraphrasing Yahoo! Inc. v. Jorge O. Kirovsky, WIPO Case No. D2000-0428, August 9, 2000).
It is therefore the view of the Panel that the domain name <toditomail.com> is confusingly similar to Complainant’s trademark TODITO.COM.
(ii) Rights or legitimate interests in respect of the domain names
Paragraph 4(a)(ii) of the Policy establishes the following principles: "Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
Complainant’s web sitewebsite and Trademark have been widely publicized through Mexican Television. Complainant’s assertion that it has used the Trademark TODITO.COM since August 15, 1999, has not been contested herein. Complainant’s Trademark registration for TODITO.COM was granted on April 2, 2002, based on an application filed on October 13, 1999. Respondent registered the domain name <toditomail.com> on June 13, 2001. These facts lead the Panel to assume that Respondent had or should have had knowledge of the existence of Complainant’s web sitewebsite and trademark.
Therefore, it is not possible to conclude that the offering of Respondent’s services through his web sitewebsite located at "www.myfriendinmexico.com" (and to which traffic coming from <toditomail.com> is directed) is a bona fide offering. Respondent offered two types of services: e-mail accounts and advertising for certified tour guides. Regarding the e-mail accounts, it is hard to believe that offering a service using a domain name that fully incorporates the trademark of a competitor can be deemed to have been made in good faith. As to the certified tour guides services, in addition to the foregoing finding, this Panel finds no bona fide reason to incorporate the mark of a third party (TODITO.COM) in a domain name (<toditomail.com>) whose main purpose is re-directing traffic to a web sitewebsite located at "www.myfriendinmexico.com".
Complainant has established that Respondent has not been commonly known as <toditomail.com>. In fact, the evidence submitted by Complainant shows that Respondent used the disputed domain name as a means for redirecting traffic to Respondent’s web page located at <www.myfriendmexico.com> (see previous supra paragraph).
It cannot be said that Respondent made legitimate noncommercial use of thde disputed name, because given the circumstances of this case, it can be inferred that it was used with intent for commercial gain to misleadingly divert consumers to Respondent’s web page found at "www.myfriendinmexico.com".
Additionally, Complainant asserts that it has not given Respondent any right to use the disputed domain name and that Respondent had actual knowledge of Complainant’s prior use of TODITO.COM and TODITOMAIL.
Taking into account that Respondent has not disputed Complainant’s assertions, and that he has not set forth any circumstance to demonstrate his rights in the contested domain name, the Panel finds that Respondent has no rights or legitimate interest in the domain name <toditomail.com>, in accordance with paragraph 4(a)(ii) of the Policy.
(iii) Bad faith
Paragraph 4 (b) of the Policy establishes circumstances that, without limitation, constitute evidence of the registration and use of a domain name in bad faith:
"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web sitewebsite or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web sitewebsite or location or of a product or service on your web sitewebsite or location."
Based on the evidence submitted by Complainant, this Panel has found that Respondent had or should have had knowledge of the existence of Complainant’s business and trademark (see supra point 6 (ii)). Additionally, the Panel has found that Respondent has not used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, that Respondent has not been known by the domain name <toditomail.com> and therefore that Respondent has no rights or legitimate interests in the said domain name (Id.).
Respondent registered a domain name that fully incorporates Complainant’s registered trademark. Considering that it is undisputed that such trademark is distinctive, and that it has been widely publicized through Mexican Television, it is difficult to infer that Respondent’s act of registration was a mere coincidence or a result of good faith. Thus, this Panel is inclined to decide that the domain name <toditomail.com> has been registered in bad faith.
It is the opinion of this Panel that the offer made by Complainant’s attorney to Respondent does not and cannot constitute evidence showing that Respondent registered the disputed domain name for the purpose of selling it to Complainant for a sum in excess of out-of-pocket costs.
Complainant, however, has established that Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web sitewebsite located at "myfriendinmexico.com", by creating a likelihood of confusion with Complainant’s mark as to sponsorship, affiliation or endorsement of Respondent’s site.
Complainant has shown that the domain name <toditomail.com> resolved to a web page which in turn directed traffic to Respondent’s site located at "www.myfriendinmexico.com", where Respondent offered the following services: 1) an electronic mail service, service which is rendered in directly competetitions with Complainant and 2) advertising for certified tour guides (see supra points 5 and 6 (ii)). Complainant’s assertion that Respondent’s services are a means for ultimately obtaining commercial gain has not been contested. Additionally, the fact that Complainant’s mark has been extensively publicized through Mexican Television leads this Panel to infer that Respondent’s use of <toditomail.com> was not coincidental, but an attempt to gain traffic and divert it to Respondent’s site found at "www.myfriendinmexico.com".
Based on the foregoing analysis, the Administrative Panel concludes that the Complainant has provided sufficiently evidence that Respondent’s registration and use of the domain name <toditomail.com> are in bad faith.
According to Paragraphs 4(i) of the Policy and 15 of the Rules, this Administrative Panel decides that the Complainant has established that the domain name <toditomail.com> is confusingly similar to a trademark in which Complainant has rights, that Respondent has no rights or legitimate interest in said domain name and that Respondent has registered and is using said domain name in bad faith.
This Administrative Panel therefore orders that the domain name <toditomail.comm > be transferred to the Complainant.
Kiyoshi I. Tsuru
Dated: October 3, 2002