WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Telefonica de Argentina S.A., v. Rancho Grande Ltd., Ernesto Serigos
Case No. D2000-1443
1. The Parties
Complainant is Telefonica de Argentina S.A., a corporation duly organized and existing under the laws of the Republic of Argentina, with its principal place of business located in the Republic of Argentina.
Respondent is Rancho Grande Ltd., Ernesto Serigos, an individual whose address is 2333 Brickel Avenue, Miami, FL. 33129, in the United States of America.
2. The Domain Name and Registrar
The domain name under dispute is "paginasdoradas.com" (the "Domain Name").
The registrar of the domain name under dispute is Register.com, Inc. ("the Registrar"), with business address in New York, New York, United States of America.
3. Procedural History
On October 23, 2000, and October 31st, 2000, Complainant submitted its complaint through e-mail and hardcopy, respectively, with the required filing fee for a single-member Panel, to the World Intellectual Property Organization ("WIPO") Arbitration and Mediation Center (the "WIPO Center"), in accordance with the Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, the Rules for Uniform Domain Name Dispute Resolution Policy (the " Rules"), and WIPOís Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("WIPOís Supplemental Rules).
On October 31st, 2000, Complainant submitted through hardcopy, information related to the obtainment of the United States Federal Trademark Registration number 2í176,286 issued on July 28, 1998, in favor of Telefonica de Argentina S.A. as sole and exclusive listed owner, covering Telephone Directories, in class 16; for commercial information and Telephone Directory Information in class 35, for several Telecommunication Services, namely, providing on-line data base of commercial information and telephone directory information in class 38 (with priority claimed under an Argentina applications numbers: 1543712, filed June 6, 1989, registration number 1318196, dated October 25, 1995; 1543713, filed June 6, 1989, registration number 1348197, dated October 25, 1995; and 1543708, filed June 6, 1989, registration number 1318195, dated October 25, 1995).
On October 27, 2000, WIPO sent a "Request for Registrar Verification" via email to the Registrar requesting, a confirmation that the Registrar had received a copy of the complaint; that the domain name under dispute is registered with it; that Respondent is the current registrant of such domain name; and full contacts details available under the WHOIS database.
On October 30, 2000, WIPO received the verification via facsimile from the Registrar. It confirmed that the domain name is currently registered with Register.com; that Respondent is the registrant as well as its administrative, technical and zone contacts; that "paginasdoradas.com" domain name is in "active" status, and that the Uniform Dispute Resolution Policy is applicable to the domain name under dispute.
On November 13 and 14, 2000, WIPO sent the "Notification of Complaint and Commencement of Administrative Proceedings", together with a copy of the complaint via e-mail and facsimile (without enclosures) and by courier (with enclosures) to Respondent, the administrative, technical, billing and zone contacts. A copy has also been communicated to ICANN and to the Registrar, via e-mail. The Notification indicated that December 2, 2000 was the deadline to submit a Response to the Complainant according to the requirements described in paragraph 5(a) of the Rules.
Respondent confirmed that the complaint was received on November 13, 2000 on his e-mail in a correspondence to WIPO dated November 17, 2000.
This Panel considers that the complaint was properly notified to the registered domain-name holder, the technical contact, and the administrative contact as provided for in paragraph 2(a) of the Rules and that formal compliance within the requirements of the Policy, the Rules, and Supplemental Rules was met.
In the above referenced November 17, 2000 communication, Respondent submitted through e-mail, with copy to the Complainant, indicating its intention and disposition to transfer the domain name under dispute to Complainant. On November 22, 2000, the WIPO Center informed to the Complainant of the Respondentís message and suggested that the parties attempt to reach a settlement based on the representations made by Respondent. Complainant responded to the WIPO Center on November 22, 2000, its intention to proceed according to such suggestions.
On December 7, 2000, WIPO sent via e-mail to Respondent with copy to Complainant, a "Notification of Respondent Default" confirming that Respondent had failed to comply with the deadline to submit its response, and therefore that a single panelist shall be appointed as requested by the Complainant, as evidenced from paragraph 14 of Complainantís complaint.
Respondent failed to elect whether the dispute be decided by a single-member or by a three-member, and therefore a single Panelist was appointed as proposed by the Complainant, as may be evidenced from paragraph 14 of Complainantís complaint.
This Panel considers that with receipt of the complaint by Respondent, he has been given a fair and reasonable opportunity to properly and diligently respond, to exercise his rights, to defend his case, submit all relevant information, documentation, as well as any allegations he may have considered appropriate.
To assure that the both parties be treated with equality in these administrative proceedings, this Panel has decided not to request any additional submissions or clarification that could in any manner be considered as a request for a reconsideration to their preparation of their case or defense, respectively, eventually for the benefit of either party with a contingent detriment of the other. Both parties have clearly had such opportunity and each of them has decided to either prepare the case personally or with the assistance of translators, legal counsel or other specialists, as required, or as a sole defense declare a general impossibility to do so. It is a general principle that the lack of knowledge of the law does not exempts the obligation to comply with it. Any party has a right to defend itself as well as the possibility for making a judgement and decide whether it wishes to do so or not, and moreover, to do so in a diligent and responsible or in any other manner. This Panel considers that Respondent when failing to respond this case and by confirming its position to transfer the domain, made his business and personal decisions.
On January 9, 2001, the undersigned signed and sent to the WIPO, a Statement of Acceptance to participate as Single Member Panelist and a Declaration of Impartiality and Independence.
On January 10, 2001, WIPO sent to Complainant and Respondent a "Notification of Appointment of Administrative Panel and Projected Decision Date", appointing Pedro W. Buchanan Smith as Sole Panelist and scheduling January 24, 2001, as the date for issuance for the Panelís decision, notifying the above pursuant to paragraphs 6(f) and 15(b) of the Rules. On the same date, WIPO transferred the case file to the Sole Panelist, with copy being sent to Complainant and Respondent.
The Panel has not received any further requests from Complainant or Respondent regarding other submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information, statements or documents from the parties, as from the information and documentation received no explanation or confirmation from either parties allegations is required, nor there is the need as an exceptional matter, to hold any in-person hearings as necessary for deciding the complaint, as provided for in paragraphs 12 and 13 of the Rules. Therefore, the Panel has decided to proceed under the customary expedited nature contemplated for this type of domain name dispute proceedings.
The language of the proceeding is English, as being the language of the domain registration and Service Agreement, pursuant to paragraph 11(a) of the Rules, and also in consideration to the circumstances of this administrative proceedings and to the fact that there is no express agreement to the contrary by the parties. Furthermore, in order to procure for the parties a fair and reasonable opportunity to respond, to exercise their rights and to present their respective cases, and that the both parties be treated with equality in these administrative proceedings, the Panelist will accept and consider all communications, information and documents submitted in any language, under the authority granted in the terms of paragraph 11(a) of the Rules.
4. Factual Background
That Telefonica de Argentina is one of the biggest Telephone Company in South America providing telecommunication services to millions of customers in Argentina, Chile, Peru, and other countries.
That Telefonica de Argentina SA is the owner of a Trademark Registration in the United States registered on July 28, 1998 under N° 2,176,286 for PAGINAS DORADAS covering the following products and services: Class 16: telephone directories (U.S. Class 2, 5, 22, 23, 29, 37, 38 and 50); Class 35: commercial information and telephone directory information; Class 38: telecommunication services, namely providing an on-line data base of commercial information and telephone directory information. This registration was initiated on January 17, 1997, well before the registration of the domain name.
A Registrarís WHOIS database search indicates that the record of registration for the domain name was created on March 26, 2000, which was more than two years after the Complainantís trademark PAGINAS DORADAS was registered on July 28, 1998.
5. Partiesí Contentions
The Complainant alleged:
- that the domain name "paginasdoradas.com", used and registered by Respondent, is identical to the PAGINAS DORADAS trademark owned by Complainant in the U.S. and in Argentina.
- that there is an evident and confusing overlapping between those names.
- that PAGINAS DORADAS is a well-known trademark in Argentina.
- that Respondent cannot demonstrate good faith since no actual use of "paginasdoradas.com" could be proved.
- that the domain name was registered primarily for the purpose of selling it to the Complainant, since some informal contacts have been occurring between the Respondent and the Complainant.
The Complainant has requested under paragraph 4(i) of the Policy, that the Administrative Panel appointed in this proceeding issue a decision ordering the contested domain name be transferred to it.
Respondent did not reply to Complainantís contentions. Furthermore, in its November 17, 2000, communications to the WIPO Center, Respondent expressed his desire to have the domain name transferred to the Complainant.
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove the presence of each of the following elements: (i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and, (ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and, (iii) that the Domain Name has been registered and is being used in bad faith.
The Panel considers that the Respondent, by registering the contested domain name with an ICANN accredited domain name registrar, has agreed to be bound by all terms and conditions of Registration Agreement, pertinent rules or policies and the Policy (incorporated and made a part of the Registration Agreement by reference). The Policy sets out that proceedings be conducted according to the Rules and the selected administrative-dispute-resolution service provider's supplemental rules, in the present case, the WIPO Supplemental Rules. Therefore, this dispute is within the scope of the above mentioned agreements and policy, and this Panel has jurisdiction to decide this dispute.
Furthermore, the Panel considers that by entering into the above mentioned Registration Agreement, the Respondent agreed and warranted that neither the registration of the domain name, nor the manner of its intended to use will directly or indirectly infringe upon the legal rights of a third party. In addition to having agreed that the resolution of a dispute arising under the registration agreement may result in the Respondentís use of the domain name may be suspended, cancelled or transferred.
The Panel considers that it is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that the parties and particularly the Respondent in domain dispute cases be given adequate notice of proceedings initiated against them; that they have a fair and reasonable opportunity to respond, exercise their rights and to present their respective cases.
In the case subject matter of this proceedings, the Panel is satisfied that these proceedings have been carried out by complying with such elemental due diligence requirements, and particularly contemplating the notification of the filing of the Complaint and the initiation of these proceedings giving the Respondent a right to respond. That the default of the Respondent to submit a proper response is not due to any omission under these proceedings. That there is sufficient and adequate evidence confirming the above.
Respondent has failed to submit a response to the allegations of Complainant. This Panel, as directed by paragraphs 14(a) and (b) and 15 (a) of the Rules, shall render the decision on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and principles of law that it deems applicable. The Panel may draw such inference, as it deems appropriate on the basis of Respondentís default and give such weight, as it considers appropriate to the Complainantís undisputed representations.
The Panel notes that the entire mark "PAGINAS DORADAS" is included in the domain name, the only addition, being the ".com." The addition of the phrase is non-descriptive and does not alter the value of the mark represented in the domain name. In addition, the .com is required for registration of domain the domain name. This Panel finds that Respondentís domain name is identical to Complainantís PAGINAS DORADAS trademark.
Furthermore, this Panel finds that there is no indication that the Respondent has any rights or legitimate interests in respect of the domain name. Respondent has not used or prepared to use the PAGINAS DORADAS domain name in connection with any bona fide offering of goods or services as contemplated under Paragraph 4(c)(i) of the Policy. Respondent is not commonly known by the domain name as contemplated under Paragraph 4(c)(ii) of the Policy, nor is Respondent making a legitimate noncommercial or fair use of the domain name as contemplated, without limitation, under Paragraph 4(c)(iii) of the Policy. The above remains unchallenged, as Respondent did not submit a response in this matter.
The Panel also finds that Respondent has used and registered the Domain Name in bad faith, in particular but without limitation, pursuant to Paragraph 4 (b) (i) of the Policy, in view that Respondent did not objected nor provided evidence to the contrary with respect to Complainantís allegations that Respondent registered or acquired the domain name for the purpose of selling or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark.
It is hereby noted that no settlement has been reached by the Parties and made known to this Panel prior to the rendering of this Panelís decision, which may eventually affect or give ground for termination of this administrative proceedings as provided for under paragraph 17(a) of the Rules, nor is this Panel aware of the existence or initiation of any other type of legal proceedings before a court of competent jurisdiction for independent resolution, regarding the domain name dispute as contemplated under paragraph 4 (k) of the Policy.
Therefore, and in consideration to the complaintís compliance with the formal requirements for this domain dispute proceeding, to the factual evidence and legal contentions that were submitted, to the conclusive confirmation of the presence of each of the elements contemplated in Paragraph 4(a)(i), (ii), and (iii) of the Policy, and on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and other applicable rules and principles of law, as directed by paragraphs 14(a) and (b) and 15(a) of the Rules, this Panel decides:
(1) that the Domain Name registered by Respondent is identical to Complainantís trademark PAGINAS DORADAS.
(2) that Respondent has no rights or legitimate interests in respect of the "paginasdoradas.com" Domain Name; and
(3) that the "paginasdoradas.com" Domain Name has been registered and is being used in bad faith by the Respondent.
Therefore, the Panel requires, pursuant to what is provided for under Paragraphs 3(c) and 4(i) of the Policy, that the domain name "paginasdoradas.com" be transferred to Telefonica de Argentina S.A.
Pedro W. Buchanan
Dated: January 24, 2001.