WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Coral Trademarks, Ltd. v. Eastern Net, Inc.
Case No. D2000-1295
1. The Parties
The Complainant is Coral Trademarks, Ltd. a corporation organized and existing under the laws of the Channel Islands, with its principal place of business at 2771 Vitacura St., Suite 904, Santiago, Chile (the "Complainant"), represented in this proceeding by Mr. Gregory Nylen, of Greenberg Traurig LLP, Los Angeles, California, USA:
The Respondent is Eastern Net, Inc. with an address at P.O. Box 170, Humacao, Puerto Rico 00792 (the "Respondent").
2. Domain Name and Registrar
The Domain Name at issue is <sabadogigante.com>, registered with Network Solutions, Inc., of Herndon, Virginia, USA (the "Registrar").
3. Procedural History
On October 4, 2000 the Center received via E-mail a Complaint in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (the "Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). On October 2, 2000 the Complaint was received in hardcopy. On October 4, 2000 the Center acknowledged receipt of the Complaint (hard copy). On October 6, 2000 receipt of the electronic version of the Complaint was acknowledged by the Center.
At the Center’s request of October 11, 2000, the Registrar confirmed on the same day to the Center that the domain name at issue is registered with NSI, that the Complainant is the registrant, that the administrative, technical, zone and billing contact is Mr. Paul Grossen, with same address as registrant, that NSI’s 5.0 Service Agreement is in effect and that the domain name is active.
The Panel sharing the Center’s assessment of November 8, 2000 independently finds that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules, and that payment of the fees was properly made. On the same day, the Center sent to the Respondent a Notification of Complaint and Commencement of Administrative Proceeding. On November 24, 2000 the Center received the Response by e-mail. On November 28, 2000 the Response was received by the Center in hardcopy.
After having received Roberto A. Bianchi’s Statement of Acceptance and Declaration of Impartiality and Independence, on December 8, 2000 the Center appointed him as a Sole Panelist. The decision date was scheduled for December 21, 2000. Thus, the Administrative Panel finds that it has been properly constituted.
On December 8, 2000 the Administrative Panel issued the following order:
"Procedural Order No. 1
1. The Respondent having submitted in its Response several allegations on its activity in the business of a restaurant and night club under the name ‘Sabado Gigante Night Club’, and having failed to submit any documents in support of such allegations;
2. The Respondent bearing the burden to ‘[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain-name holder) to retain registration and use of the disputed domain name (This portion of the response shall comply with any word or page limit set forth in the Provider's Supplemental Rules.)’, and to ’[a]nnex any documentary or other evidence upon which the Respondent relies, together with a schedule indexing such documents’, pursuant to Rules Paragraph 5(b)(i) and 5(b)(ix);
3. The Respondent having failed to conclude its Response, pursuant to Rules, Paragraph 5(b)(viii), with a statement followed by the signature of the Respondent or its authorized representative that
"Respondent certifies that the information contained in this Response is to the best of Respondent's knowledge complete and accurate, that this Response is not being presented for any improper purpose, such as to harass, and that the assertions in this Response are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument."
4. The Panel having, pursuant to Rules, Paragraph 10(a), the general power to ‘conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules’, as well as, in particular, the power to request, in its sole discretion, in addition to the complaint and the response ‘further statements or documents from either of the Parties’, pursuant to Rules, Paragraph 12;
The Administrative Panel requests the Respondent:
a) To submit in this proceeding any documents or any other evidence in support of the following contentions by Respondent:
- ‘Sabado Gigante Night Club is a family restaurant and night club, it has nothing to do with a TV show’. In particular the Panel requests evidence of the fact that such a restaurant and night club does exist, and/or is authorized to trade by the laws of Puerto Rico and/or by the competent authority for licensing restaurants and/or night clubs, etc.
- ‘Our company made several advertisements and spent thousands of dollars (aprox. $12,000) to attract a variety of people, so they can spend an exceptional night every Saturday. This is why we are using Sabado Gigante in all our advertisements’. The Panels requests documented evidence of such advertisements and of such expenses related thereto.
- ‘We are still paying the loan that we make for the promotion’. The Panel expects evidence of the existence of such loan and of such payments.
The Respondent is to submit the requested evidence and documents within SEVEN working days counted from the day of the reception of the communication of this Procedural Order by the WIPO Arbitration and Mediation Center to the Respondent.
b) To submit a signed statement pursuant to Rules, Paragraph 5(b)(viii). See 3 above.
The Panel also reminds the Parties Paragraph 14(b) of the Rules, which reads: ‘14. Default
(b) ‘If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.’ Panel’s emphasis.
On December 14, 2000 Respondent requested the Panel an extension to comply with the order. On December 15, 2000 this request was denied by the Panel on the ground that the deadline for issuing a decision by the Panel should be complied with.
On December 16, 2000 Respondent sent a reply by e-mail to the procedural order. This time the certification pursuant to Rules, paragraph 5(b)(viii) is included. The Center acknowledged receipt thereof on December 18, 2000. Some allegations were made in this reply by Respondent that exceed the scope of the requests made in the Order. Those allegations will not be considered by the Panel because of their late submission. As the annexes mentioned in Respondent´s reply had not been received by the Panel, on December 20, 2000 the Panel issued Procedural Order No.2 requesting the Respondent to send the reply's enclosures by fax. On December 21, 2000 Respondent reply's enclosures were received by the Panel.
There were no other submissions of the Parties or other orders issued. Due to the time needed for the Respondent to comply with Panel´s Procedural Order No.2 the deadline to issue a decision was reset to December 26, 2000.
The registration agreement for the domain name at issue has been done and executed in English by Respondent-Registrant and the Registrar. The Parties’ submissions have been made in English. As there are no special circumstances for the Panel to determine otherwise, as provided in Rules, Paragraph 11, the language of this proceeding is English.
4. Factual Background
The following facts, extracted from the Parties’ submissions and their enclosed documents, and undisputed, are established:
Oriashi Ltd. was the original owner of the SABADO GIGANTE Mark registered with the principal Register of the United States Patent and Trademark Office on August 18, 1992, Reg. No. 1,708,751, in International Class 41, for entertainment services, live musical performances, and television entertainment services in the nature of a game and variety show. Oriashi, Ltd. has transferred all rights in and to the SABADO GIGANTE Mark to Complainant, Coral Trademarks Limited. Respondent contended that there weren’t any U.S. trademark registration, but the Panel is satisfied by Complainant´s documentary evidence.
An application for registration of the service mark SABADO GIGANTE Mark in the Republic of Chile was submitted by Complainant on June 17, 1999 in International Class 41 for a variety of entertainment and educational services.
An application for service mark registration of SABADO GIGANTE before the U.S.P.T.O. in class 38 was submitted by Complainant on December 17, 1995 in connection with telecommunication services.
Complainant is currently using, and/or intends to use the SABADO GIGANTE Mark in the future, in connection with, among other things, telecommunication services (namely, electronic transmission of voice, information, data and images); advertising, marketing, and sales of goods and services via the Internet; and banking services (namely, credit and debit card services, consumer lending services, and mortgage lending services).
SABADO GIGANTE is a variety show which includes contests and games. It is family-oriented and includes interviews with celebrities, artists, musicians, informative reports and travel segment. It contains absolutely no pornographic contents. It is broadcasted in Spanish. It was first broadcasted in the U.S. in 1986, and has been aired in the Republic of Chile since 1962. Its host and creator, Mr. Mario Kreutzberger, also known as "Don Francisco", is the main reason for the success of this program and for an important legion of fans. In 1993 the Guinness Book of World Records named SABADO GIGANTE as "the longest running program in America". The program successfully airs in 20 countries of central and South America. SABADO GIGANTE having aired almost 40 years without interruption or repeats has been nominated for various awards such as the Silver Award, Emmy Award, TV and Soap Operas, ACE of New York, and others.
Eastern Net, Inc. registered the <sabadogigante.com> domain name on June 4, 1998 with Network Solutions, Inc.
On or about September 20, 2000 Complainant discovered that the domain name <sabadogigante.com> was being used by Respondent for its own website. The website that resolved from the foregoing domain name as of September 20, 2000, contained numerous links to hard-core pornographic web sites, and advertises the X-rated and adult content offered by those web sites. The website also resolved with a title "SABADO GIGANTE Se vende dominio, domain for sale info." The website also stated in Spanish that "your company can advertise here for sales information." The website also states in Spanish "Selling the following domains – for information enter here" followed by a link to <sabadogigante.com>, as well as links to the domain names <enamorate.com>, <medicinadeportiva.com>, <ricosyfamosos.com>, <computergallery.com>, <tripless.com>, <islandfinance.com>,<usaeagle.com>, <pollospicu.com>, and <lesbianismo.com>.
The Policy is in effect for the Registrar and the Respondent-Registrant, and may therefore be invoked by Complainant.
5. Parties’ Contentions
A. The Complainant contends that:
The domain name <sabadogigante.com> that is the subject of this Complaint is identical to the SABADO GIGANTE Mark, in which Complainant has rights.
Respondent has no rights in or to the SABADO GIGANTE Mark. More so, Respondent registered the <sabadogigante.com> domain name without the knowledge or consent of Complainant.
Respondent seeks to take advantage of Complainant, the owner of the famous SABADO GIGANTE Mark, and to attract traffic to its own site by improper use of a famous mark. In fact, Respondent appears to have registered in bad faith other domain names that have no legitimate connection to its business and that contain other prominent marks, including <enamorate.com>, <medicinadeportiva.com>, <ricosyfamosos.com>, <computergallery.com>, <tripless.com>, <islandfinance.com>, <usaeagle.com>, <pollospicu.com>, and <lesbianismo.com>.
Respondent has used Complainant’s SABADO GIGANTE Mark to drive visitors to its web site in numerous ways. First, Respondent used the domain name <sabadogigante.com> to drive traffic to a web site at which Respondent brazenly advertised the numerous domain names it had registered for sale, including <sabadogigante.com>. Second, Respondent created a web site at <sabadogigante.com> for the sole purpose of directing Internet users to Respondent’s collection of explicit, pornographic banner advertisements and links to other pornographic web sites. It reasonably can be presumed that Respondent has entered into commercial agreements whereby Respondent benefits financially from visitors to its site who click on the pornographic banner ads it contains. Respondent also attempts to generate commercial gain by creating confusion as to the affiliation of its pornographic site with
Complainant’s SABADO GIGANTE Mark, the Sabado Gigante television show, and its famous host, Mario Kreutzberger. As such, its 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.
Respondent’s unauthorized use of the SABADO GIGANTE Mark in connection with a pornographic web site also tarnishes the SABADO GIGANTE Mark, in violation of paragraph 4(b)(iv) and 4(c)(ii) of the Policy.
Respondent also appears to exhibit a pattern of cybersquatting behavior because, just as it has registered the domain name <sabadogigante.com> in order to prevent Complainant from having access to and reflecting the SABADO GIGANTE Mark in a corresponding domain name, it also has registered the domain names <enamorate.com>, <medicinadeportiva.com>, <ricosyfamosos.com>, <computergallery.com>, >tripless.com>, <islandfinance.com>, <usaeagle.com>, <pollospicu.com>, and <lesbianismo.com>, presumably to prevent others from having access to those domain names.
Respondent has not used the <sabadogigante.com> domain name in connection with any bona fide offering of goods or services, has not been commonly known by the <sabadogigante.com> domain name, and has not made any noncommercial or fair use of the <sabadogigante.com> domain name. Complainant is in no way connected or related to Respondent, and Complainant does no business with Respondent whatsoever.
The circumstances set forth above further indicate that Respondent should be considered as having no rights or legitimate interests in or to the <sabadogigante.com> domain name that is the subject of this Complaint, and that Respondent has registered the <sabadogigante.com> domain name in bad faith. Although United States law is not directly applicable to these proceedings, Respondent is located in the Territory of Puerto Rico and is subject to United States law, which also supports Complainant’s claims. Moreover, the infringing conduct also occurred within the jurisdiction of the United States.
Respondent has registered the <sabadogigante.com> domain name incorporating the SABADO GIGANTE Mark that was both famous and distinctive at the time the <sabadogigante.com> domain name was registered. Respondent’s registration and use, including its offering to sell the domain name <sabadogigante.com>, dilutes the SABADO GIGANTE Mark. By engaging in this diluting behavior, Respondent has engaged in cyber piracy in connection with services it is rendering in interstate commerce in violation of Section 43(d) of the Lanham Act, 15 U.S.C. § 1125 (d).
Moreover, because Respondent has registered the <sabadogigante.com> domain name incorporating Complainant’s SABADO GIGANTE Mark to lure visitors to its sexually explicit web site, Respondent has violated Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c).
The unlawful acts of Respondent have caused and are continuing to cause irreparable injury to the goodwill and reputation of Complainant and, unless restrained, will cause further irreparable injury.
B. Respondent contends:
Sabado Gigante Night Club is a family restaurant and night club, it has nothing to do with a TV show.
This domain is not confusing nor similar to the service trademark in which the complaint has rights. This domain was registered on June 4, 1998 and since that date we are offering good service to our customer. The domain <sabadogigante.com> is being used in good faith for almost three years.
The complaint is based on the registration of SABADO GIGANTE trademark issued by the Republic of Chile on June 17, 1999. One year later than our domain was registered. Our domain <sabadogigante.com> was registered on June 4, 1998.
Sabado Gigante is not "Saturday Extravaganza" as specified on section 12 paragraph 6 of the complaint document. The real translation could be "Giant Saturday" or "Big Saturday" or "Super Saturday". It has different names but with the same meaning.
Our company made several advertisements and spent thousands of dollars (approx. $12,000) to attract a variety of people, so they can spend an exceptional night every Saturday. This is why we are using Sabado Gigante in all our advertisements. We are still paying the loan that we made for the promotion.
Coral Trademarks, Ltd as specified on our attachments doesn't mention anything about <sabadogigante.net> which is under construction, where the owner has no rights or legitimate interest for the domain name. This domain was registered and is being used in bad faith due to its promotional banner.
Another web address is <sabadogigante.org> that is also being used with bad faith without any respect for the domain name. It has promotional banner and is offering additional services that has nothing to do with the domain.
Our domain <sabadogigante.com> is not confusingly similar to a trademark and is not being used in bad faith. Our domain offers to the public a variety of foods, music and entertainment every Saturday.
We have never used or intended to use the subject domain <sabadogigante.com> in any way related to apparel. The term "Sabado Gigante" is a generic term in the field of entertainment, generally associated with music, dancing, live events and other forms of entertainment.
We had the right to register the subject domain name <sabadogigante.com> based upon the generic usage of the term "Sabado Gigante." There are no circumstances that indicate the domain name was or intend to transfer or sale to the Complainant who is the owner of the trademark or to a competitor of the Complainant.
There is no indication that we registered the domain name in order to prevent the Complainant from reflecting its trademark in a corresponding domain name, or that we have engaged in a pattern of such conduct.
There is no indication that we registered the domain name primarily for the purpose of disrupting the business of a competitor. There is no indication that we intended to attract Internet users to its 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. In order to prevent confusions to Internet users we had typed below our web page www.sabadogigante.com a notice that our domain has nothing to do with the tv show. Also we made a link to www.gigante.com tv show.
SABADO GIGANTE domain registration is a fair use of a generic term that was available for registration in the form of the subject domain name without disparagement of, or impact upon, Complainant's trademark rights. Widespread use of this generic term predated Complaint's trademark registration.
6. Discussion and Findings
Identity of Confusing Similarity
Contrary to Respondent's allegation, Complainant does in fact have assignee rights on the U.S. mark SABADO GIGANTE, and original rights in the Chilean mark SABADO GIGANTE. A simple comparison of the domain name <sabadogigante.com> and the SABADO GIGANTE Mark is convincing that the domain name at issue is identical or, having in mind the suppression of the space between "sabado" and "gigante" and the inclusion of the ".com" gTLD in the domain name registration, at least confusingly similar to Complainant’s marks. Puerto Rico, where Respondent is resident, is a Spanish-speaking commonwealth and as such it would seem quite natural for any person to choose Spanish words like SABADO ("Saturday" in English) or GIGANTE ("giant" in English) to distinguish a commercial activity or business in the field of restaurants and/or night clubs. However the combination of both words seems neither an obvious nor a common use expression, particularly if it is the name of a famous or well-known TV show uninterruptedly aired since 1962 in Chile and since 1986 in the U.S.
The Complainant has met its burden under Policy, Paragraph 4(a)(i).
Lack of Rights and Legitimate Interests
Complainant has denied that Respondent has rights or legitimate interests in the domain name. According with Rules, Paragraph 5(b)(i) and 5(b)(ix) Respondent generally carries the burden to specifically respond to the Complaint, and to present any documents in its favor. In order to prove rights and legitimate interests in the domain name Respondent may, for instance, refer to Policy, Paragraph 4(c).
Respondent has contended that Sabado Gigante Night Club is a family restaurant and night club, and that it has nothing to do with a TV show. However Respondent has not presented the Panel with any evidence in support of such assertions, despite the fact that Respondent bears the burden of proving its assertions by supplying evidence and that the Panel issued Procedural Orders No.1 and No.2 (see 3 above) with a request that Respondent submit documentary evidence of its contentions. Respondent replied to the order No.1 that
"By the fact that our facilities we operated is [sic] on a trial base, Government of Puerto Rico permits not [sic] request up this moment. Pictures of site not at hand at this moment".
It is very difficult for the Panel to accept such bold assertion as deserving any weight. These days nothing could be easier than taking some pictures of the alleged restaurant and night club and sending them to the Panel.
In its reply to Procedural Order No.2 Respondent has in fact submitted some documents intended to prove its allegations. A Banco Popular statement of September 25, 2000 has been provided by Mr.Grossen. However such bank statement does not evidence that a loan was granted for the Respondent or Mr.Grossen to develop any restaurant under the name SABADO GIGANTE, or any restaurant whatsoever. Neither do some copies of invoices for the provision of advertising material for Mr.Grossen evidence that such advertising are referred to any activity which may prove rights or legitimate interests in the domain name. In particular there is no description on the invoices of the materials provided by "J. Nieves Signs" to Mr.Grossen to evidence that such materials do in fact belong to any restaurant, or that they have been used to advertise any restaurant or night club. The Panel finds that Respondent has not met its burden to establish rights or legitimate interests in the domain name.
The Panel finds that Complainant has met its burden under Policy, Paragraph 4(a)(ii).
Bad Faith Registration
There has been no evidence by Complainant that Respondent registered a number of domain names that correspond to third parties' trademarks other than Complainant’s. In fact the list provided by Complainant of other domain name registrations by Respondent (<enamorate.com>, <medicinadeportiva.com>, <ricosyfamosos.com>, <computergallery.com>, <tripless.com>, <islandfinance.com>, <usaeagle.com>, <pollospicu.com>, and <lesbianismo.com>) is not supported by evidence that such domain names correspond to trademark registrations owned by third parties other than Complainant’s, or that several of those domain names are not of a generic or common-use nature. This prevents the Panel from inferring that Respondent has engaged in a "pattern of such conduct" under Policy, Paragraph 4(b)(ii), stating
"(...) 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."
Despite Respondent’s general contention that it did not intend to sell the domain name, neither in its Response nor in its reply to Procedural orders 1 and 2 has Respondent denied Complainant’s specific contention that Respondent intended to sell the domain name on its web site as late as September 20, 2000 or that Respondent posted pornographic or adult oriented content on its web site under the domain name at issue at a date as late as September 20, 2000.
The fact that the SABADO GIGANTE TV show is well known by the Spanish speaking public (including the Puerto Rico public) and that Respondent lacks rights or legitimate interests in the domain name strongly suggest that Respondent's primary purpose for the domain name registration was to obtain an illegitimate profit by selling the domain name. This is a bad faith registration circumstance under Policy, Paragraph 4(b)(i) that states
"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."
Additionally, by its registration of the domain name at issue, Respondent is effectively preventing the Complainant from reflecting its trademark SABADO GIGANTE in the corresponding domain name under the ".com" gTLD.
The Panel thus finds that the Complainant has met its burden under Policy, Paragraph 4(a)(iii), in that the domain name was registered in bad faith.
Use in Bad Faith
Respondent has not denied Complainant´s contention about the posting of pornographic contents on the web site under the domain name at issue as late as September 20, 2000. It also has not disputed the truth and accuracy of the hard copy of pornographic images provided by Complainant. Respondent’s site at present (as seen in an independent visit by the panelist following its appointment) does not include any pornographic content. Instead it includes a menu of meals and beverages with a price list. It also includes a text advising that the Complainant´s web site of the TV show is located at www.gigante.com. However the posting of the present content of the web site was effected and substituted undoubtedly after the Respondent received notice of the Complaint.
The posting of pornographic contents on a web site under a domain name that corresponds to a third party's mark is a bad faith use of the domain name. This Panel´s finding remains even when the content of the web site was changed for convenience after Respondenr received notice of the Complaint. This is still much more so when the present contents of the web site refers to a restaurant and night club whose real existence has not been evidenced by Respondent in replying to Procedural Orders No.1 and No.2.
Additionally Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with the SABADO GIGANTE Mark as to the source, sponsorship, affiliation, or endorsement of the web site or of a product or service on the web site, which is a circumstance of bad faith use under Policy, Paragraph 4(b)(iv). The purpose of commercial gain of Respondent can be inferred from the fact that it first posted on its web site numerous advertisements of adult-oriented web sites (banners) which presumably have been paid by their advertisers. Respondent’s unauthorized use of the SABADO GIGANTE Mark in connection with a web site posting pornographic images or adult content has also tarnished the SABADO GIGANTE Mark, which basically distinguishes a family-oriented TV show without any pornographic contents whatsoever, in violation of Paragraphs 4(b)(iv) and 4(c)(iii) of the Policy.
The proven offer to sell the domain name on the web site itself as late a date as September 20, 2000 is further an evidence of bad faith use.
The Panel finds that the Complainant has met its burden under Policy, Paragraph 4(a)(iii), in that the domain name is being used in bad faith.
The Panel has found that the domain name <sabadogigante.com> is practically identical or at least confusingly similar to the SABADO GIGANTE service marks of the Complainant, and that the Respondent has no rights to, or legitimate interests in said domain name. The Panel has further found that the domain name has been registered in bad faith, and that it is being used in bad faith.
Therefore, pursuant to Policy, Paragraph 4(i), and Rules, Paragraph 15, the Administrative Panel requires that the registration of the domain name <sabadogigante.com> be transferred to the Complainant Coral Trademarks, Ltd.
Roberto A. Bianchi
Dated: December 26, 2000