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Arbitration and Mediation Center
Grupo Televisa, S.A., Televisa, S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v. Party Night Inc., a/k/a Peter Carrington
Case No. D2003-0796
1. The Parties
Complainant is described in the Complaint as an international group of companies headed by Grupo Televisa, S.A., of Delegación Alvaro Obregón, México, and comprising numerous wholly owned subsidiaries including Televisa, S.A. de C.V., of Colonia Doctores, Mexico, Estrategia Televisa, S.A of Delegación Alvaro Obregón, México, and Videoserpel, Ltd., of Zug, Switzerland. The Complainant is represented by Leventhal Senter & Lerman PLLC, of Washington, D.C., United States of America.
Respondent is Party Night Inc., a/k/a Peter Carrington, of Amsterdam, Netherlands.
2. The Domain Name and Registrar
The disputed domain name <televisadeporte.com> is registered with Key-Systems GmbH dba domaindiscount24.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 8, 2003. On October 8, 2003, the Center transmitted by email to Key-Systems GmbH dba domaindiscount24.com a request for registrar verification in connection with the domain name at issue. On October 14, 2003, Key-Systems GmbH dba domaindiscount24.com transmitted by email to the Center its verification response confirming that Respondent is listed as the domain name holder and providing the contact details for the administrative, billing, and technical contacts. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on October 14, 2003. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 15, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was November 4, 2003. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 10, 2003.
The Center appointed Joan Clark as the sole panelist in this matter on November 19, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The domain name at issue was registered April 13, 2003.
Complainant relies upon the registered service marks for TELEVISA and TELEVISA and Design as well as the service mark TELEVISA DEPORTES.
Complainant has produced a copy of a Certificate of Registration of the service mark TELEVISA DEPORTES and Design, registered December 11, 1998, in the name of Televisa, S.A. de C.V., in association with educational, sportive, cultural and other activities.
Complainant has also produced copies of Certificates of registration, in the European Community, of the trade-mark TELEVISA registered December 15, 2000, and also TELEVISA and Design registered December 15, 2000, both registered in the name of Estrategia Televisa, S.A. de C.V., in association with numerous services including advertising, telecommunications, entertainment and computer services.
Complainant has also produced a copy of a Benelux registration dated June 25, 1992, of the mark TELEVISA registered in the name of Televisa, S.A. de C.V. for radio and television programs and other services.
The Complaint provides a list of 62 countries including the United States where it claims its service marks TELEVISA and TELEVISA and Design are registered. The Complaint limits documentary evidence of service mark registrations to production of copies of the registration certificates in the jurisdictions above described which include the Netherlands where Respondent is located according to information in the WHOIS database.
Complainant has filed a copy of a letter dated June 2, 2003, from Complainant’s solicitors addressed to Respondent claiming that Respondent’s registration and use of the domain name in dispute impinge on Complainant’s rights and calling upon Respondent to immediately cease all use of <televisadeporte.com> and to transfer all interest in the domain name to Complainant. The Complaint states that there was no response to this letter sent by email, and that the Federal Express package containing same was returned as undeliverable.
According to the Complaint, until recently, upon entering the <televisadeporte.com> domain name into the web browser, an internet user was routed to the "www.yes-yes-yes.com" website which contained numerous banner and pop-up advertisements and links to a variety of generic search topics with links to numerous commercial websites including pornographic websites.
The Complaint states that Peter Carrington/a/k/a Party Night Inc., has a history of purchasing domain name registrations that are misspellings of others’ websites or trade-marks and redirecting the domain names to pornographic and other commercial websites. The Complaint further states that Respondent is in fact a well-known cybersquatter who has been brought before National Arbitration Forum and WIPO Panels on at least fifty-six (56) prior occasions.
The Complaint further states that the contact information provided by Respondent to the Registrar is false and that attempts by Complainant’s counsel to contact Respondent using both the address and telephone number identified by the Registrar’s WHOIS information were fruitless, the address and telephone number provided by Respondent being that of the Jan Luyken Hotel in Amsterdam.
The Complaint further states that at the time of filing the Complaint, the domain name in dispute appeared to be inactive.
No response was filed by Respondent.
5. Parties’ Contentions
Complainant, which describes itself as an international group of companies, declares it is an international media and entertainment company incorporated in Mexico since 1972, that it is the largest media company in the Spanish speaking world and a dominant figure in the international entertainment business. It is stated that Complainant produces the most Spanish language television programs and is believed to own the largest library of Spanish language television programming in the world which it broadcasts along with programs produced by others through its networks, its cable system and DTH satellite services in which it owns interests in Mexico, Latin America and Spain. Complainant states it is believed to be the leading publisher in the world of Spanish language magazines and is a major international distributor of those magazines and other periodicals, and further, that it engages in other businesses including radio production and broadcasting, professional sports and show business promotions.
The Complaint indicates that Complainant has registered its service marks for TELEVISA and/or TELEVISA and Design in sixty-two (62) countries worldwide, and that it has registered the service mark TELEVISA DEPORTES in Mexico, and the service marks for TELEVISA and TELEVISA and Design in the European Union and the service mark TELEVISA in Benelux.
The Complaint states that the first use of the TELEVISA mark occurred no later than January 31, 1973, and the first use in commerce occurred no later than August 31, 1976.
The Complaint sets forth details of the use of the TELEVISA and TELEVISA DEPORTES marks in conjunction with numerous sports related services, including the broadcast and promotion of sporting events in Mexico and the production of sports related television programming and the reporting of sports related news and statistics.
Complainant states that Respondent’s domain name <televisadeporte.com> is virtually identical and/or confusingly similar to Complainant’s registered service marks TELEVISA and TELEVISA DEPORTES.
The Complaint states that Respondent is not a licensee of Complainant, nor is Respondent authorized to use Complainant’s marks or any variation thereof in connection with any use.
Complainant urges that Respondent has no rights or legitimate interest in the domain name and further states that Respondent is not using the domain name or names corresponding to the domain name in connection with a bona fide offering of goods or services. Because of the fame associated with Complainant's marks, their longstanding use and numerous trademark registrations, Complainant argues it is presumed that Respondent is not commonly known by the domain name as considered in the Policy, paragraph 4(c)(ii).
Complainant states that the use of the domain name confusingly similar to Complainant’s mark to attract Complainant’s customers to Respondent’s commercial pornographic websites is not considered to be a bona fide offering of goods or services pursuant to the Policy, paragraph 4(c)(i), or a legitimate non-commercial or fair use pursuant to the Policy, paragraph 4(c)(iii).
The Complaint states that Respondent’s objectives are clear, to divert internet users interested in Complainant’s established marks to Respondent’s commercially driven website and that such use tarnishes the goodwill associated with Complainant’s mark and frustrates internet users searching for Complainant’s services by confronting them with explicit and unanticipated content.
The Complaint states that Respondent’s activities are evidence of bad faith registration and use pursuant to the Policy, paragraph 4(b)(iv).
Complainant urges that because of the famous and distinctive nature of Complainant’s marks and the international presence and use of TELEVISA and TELEVISA DEPORTES, Respondent was on notice as to the existence of Complainant’s pre-existing rights in the marks.
The Complaint refers to a prior Complaint against Respondent for transfer of a domain name appropriating the TELEVISA mark to indicate that Respondent was clearly aware of the existence of this mark. Complainant also remarks that Respondent registered the domain name in dispute, <televisadeporte.com>, on April 13, 2003, less than two weeks after being formally notified by WIPO on March 31, 2003, of Complainant’s previous Complaint against Respondent concerning the TELEVISA mark and the <televisa.com> domain name.
Complainant refers to the decision in Grupo Televisa S.A. v. Party
Night Inc. a/k/a Peter Carrington, WIPO Case No.
D2003-0228 (May 21, 2003), in which the Panel found that Respondent had
knowledge of Complainant’s TELEVISA mark.
Complainant also refers to "Respondent’s pattern of abusive domain name registration" as clear evidence of bad faith.
The Complaint requests the Administrative Panel to issue a decision that <televisadeporte.com> be transferred to Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, Complainant must prove each of the following in order that Respondent be required to submit to a mandatory administrative proceeding:
i. The domain name in issue is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
ii. Respondent has no rights or legitimate interests in respect of the domain name, and
iii. The domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for the purpose of paragraph 4(a)(iii) above, shall be evidence of the registration and use of a domain name in bad faith but are not limitative.
Paragraph 4(c) of the Policy sets out three illustrative circumstances each of which, if proven, shall demonstrate Respondent’s rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) above.
(i) Identity or confusing similarity to a trade-mark or service mark in which Complainant has rights
The Complaint relies upon service marks one of which, TELEVISA DEPORTES and Design, is registered in Mexico in the name of Televisa, S.A. de C.V. Other trade-marks on which Complainant relies are TELEVISA and TELEVISA and Design, registered in the name of Estrategia Televisa, S.A. de C.V. in the European Union and TELEVISA registered in Benelux in the name of Televisa, S.A. de C.V.
Televisa, S.A. de C.V. and Estrategia Televisa, S.A. de C.V. are stated in the Complaint to be wholly owned subsidiaries of Grupo Televisa, S.A. None of the service marks relied upon by Complainant is registered in the name of Grupo Televisa, S.A.
Paragraph 4(a)(i) of the Policy requires, as one element to be proved, that
the domain name be identical or confusingly similar to a trademark or service
mark in which Complainant has rights. These words do not require that
Complainant be the owner of the mark and would include, for example, a licensee
of the mark. It has been accepted in several decisions that a company related
as subsidiary or parent to the registered holder of a mark may be considered
to have rights in the mark. See for example Miele, Inc. v. Absolute
Air Cleaners and Purifiers, WIPO Case
No. D2000-0756 where Complainant’s grand-parent corporation had a long established
U.S. trademark registration for the mark for vacuum cleaners. The decision reads
"The Panel finds that Complainant, through its affiliation with its grandparent corporation which owns the trade-mark registration, has rights in and duties concerning the mark MIELE".
The Policy does not require that Complainant have exclusive rights in the trade-mark
or service mark - see Smart Design LLC v. Carolyn Hughes, WIPO
Case No. D2000-0993 in which the Panel stated:
"It is also abundantly clear from the evidence filed by Respondent that there are literally dozens of other entities trading under and by reference to precisely the same name"
"In this Panel’s view the test under paragraph 4(a)(i) of the Policy, which makes no mention of "exclusive rights" is or ought to be a relatively easy test for a Complainant to satisfy, its purpose simply being to ensure that Complainant has a bona fide basis for making the Complaint in the first place".
Televisa, S.A. de C.V. and Estrategia Televisa, S.A. de C.V. each have the necessary interest, that is rights in the service marks in question, to file this Complaint. However, the Complaint is stated to be filed by the international group of companies headed by Grupo Televisa, S.A. and including the other companies registrants of the service marks in question, which are said to be wholly owned subsidiaries of Grupo Televisa, S.A. Although no documentary evidence was produced with regard to the parent subsidiary relationship, the Panel accepts this statement which is certified in the Complaint to be accurate.
The Panel concludes that Grupo Televisa, S.A. has rights in the service marks
in question which are registered by its wholly owned subsidiaries. Such appears
also to have been the conclusion of the Panel in two other decisions, although
these contain no discussion on this point. (See Grupo Televisa, S.A. et al.
v. Joel F. Gonzalez, WIPO Case No.
DTV2002-0001; Grupo Televisa, S.A. v. Party Night, Inc., a/k/a Peter
Carrington, WIPO Case No. D2003-0228).
The Panel finds that the disputed domain name <televisadeporte.com> is confusingly similar to the service marks TELEVISA and TELEVISA and Design, registered service marks of a subsidiary of Grupo Televisa, S.A., the first and prominent part of the domain name being identical to TELEVISA.
As found in numerous decisions, the suffix referring to the top-level domain such as ".com" should not be taken into consideration in determining the identity or confusing similarity of a domain name to a trade mark or service mark.
The disputed domain name <televisadeporte.com> is almost identical to the words in the registered service mark TELEVISA DEPORTES and Design registered by another subsidiary of Grupo Televisa, S.A., except that in the domain name there is no space between "televisa" and "deporte" and the "s" at the end of TELEVISA DEPORTES is missing in the domain name. The Panel finds that the disputed domain name is clearly confusingly similar to the service mark TELEVISA DEPORTES and Design.
The first condition required to be satisfied under paragraph 6(i) above is therefore fulfilled.
(ii) Respondent has no rights or legitimate interests in respect of the domain name
The Complaint states that Respondent is not a licensee of Complainant nor is he authorized to use Complainant’s marks in any way. No response having been filed, no evidence or argument has been put forward by Respondent to demonstrate any rights or legitimate interests he may have in the domain name. Indeed, it would appear that it would be difficult for Respondent to make such assertions since there is no indication in the materials submitted by Complainant that Respondent has used the domain name in connection with a bona fide offering of goods and services, the domain name having been registered and used by Respondent in bad faith, as found by the Panel under (iii) below. Nor is there any indication that Respondent has been commonly known by the domain name. Nor would it appear that it could be established that Respondent is making a legitimate non-commercial or fair use of the domain name without intent for commercial game.
The Panel therefore concludes that the second condition under paragraph 6(ii) above, that Respondent has no rights or legitimate interests in respect of the domain name, has been fulfilled.
(iii) The domain name has been registered and is being used in bad faith.
Complainant has submitted ample evidence and argument to support the conclusion that the registration of the disputed domain name was made in bad faith. This follows in part from the renown and long usage of the registered service marks on which Complainant relies. The Panel finds on the balance of probabilities that Respondent was aware of the existence and renown of the service mark TELEVISA DEPORTES and Design and indeed had been formally notified by WIPO of Complainant’s previous Complaint against Respondent concerning the TELEVISA mark, less than two weeks before Respondent filed the domain name in dispute in this case.
The Panel also notes, as an element indicating bad faith, the false contact information provided by Respondent to the Registrar with which the disputed domain name is registered.
The Panel has no hesitation in finding that the disputed domain name was registered in bad faith.
The use which Respondent appears to have made of the disputed domain name is to have arranged that, until recently, upon entering the <televisadeporte.com> domain name into the web browser, an internet user was routed to other websites including pornographic websites with no use or reference to Complainant or any of its services. Such use of the domain name is also clearly in bad faith following as it does upon registration in bad faith.
The Panel therefore concludes that Respondent has both registered and used the disputed domain name in bad faith and the third condition required to be satisfied under paragraph 6(iii) has been fulfilled.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <televisadeporte.com> be transferred to Complainant Grupo Televisa, S.A.
Dated: December 2, 2003