WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Casa Editorial El Tiempo S.A, v. Spider Webs Ltd
Case No. D2000-1757
1. The Parties
Complainant is Casa Editorial El Tiempo S.A, Avenida El Dorado n. 59 Ė 70, Bogotŗ, Colombia. The Complainantís authorized representative in this administrative proceeding is Fernando Triana, Esq of Bogotŗ., Colombia.
Respondent is Spider Webs Ltd, 2200 Lauder Rd., Houston, Texas 77039, United States of America. The Respondent is represented by Benard Lilse Mathew, III of Spring, Texas.
2. The Domain Name and Registrar
The domain name at issue is <casaeditorialeltiempo.com> hereinafter referred to also as the "Domain Name". The registrar is Network Solutions, Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received a complaint (hereinafter the Complaint) on December 18, 2000, (by email) and on December 21, 2000, (hardcopy and exhibits). The Complaint satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). Complainant made the required payment to the Center.
On December 21, 2000, the Center transmitted via email to Network Solutions, Inc., a request for registrar verification in connection with this case. On December 28, 2000, Network Solutions, Inc. transmitted via email to the Center, Network Solutions, Inc.'s Verification Response, confirming that the registrant is Spider Webs Ltd and that the Domain Name registration is in "active" status.
Having verified that the Complaint satisfied all the formal requirements of the Policy and the Rules, the Center transmitted on January 4, 2001, to Spider Webs Ltd the Notification of Complaint and Commencement of the Administrative Proceeding by post (with attachment), and by fax and email (without enclosures).
The Respondent filed a Response by email on January 23 , 2001 and by hard copy on January 29, 2001.
The Complainant elected to have the Complaint resolved by a single Panelist: The Respondent elected a three-person panel. Both parties have paid the requisite amounts to the WIPO Center.
On February 12, 2001, the WIPO Center received a supplemental filing from Complainant. WIPO advised the Compliant by email on the same day that it was possible to accept a supplemental filing made by either party before the appointment of the Administrative Panel but that it would be at the Panelistsí sole discretion whether or not to consider such supplemental filing in reaching the decision.
On February 13 , 2001, the WIPO Center invited Mr. Luca Barbero, of Turin, Italy, to chair the Panel in this case. It had earlier invited Ms. Dana Haviland, of Palo Alto, USA, and Mr. Luis H. de Larramendi, of Madrid, Spain, to be Panelists. It transmitted to all Panelists a statement of acceptance and requested a declaration of impartiality and independence.
All Panelists duly advised their acceptance and forwarded to the WIPO Center their statements of impartiality and independence. On February 16, 2001, the Complainant and the Respondent were notified of the appointment of the Panel. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.
On March 2, 2001, pursuant to Paragraphs 10(a) and 12 of the Rules, the Panel issued a Procedural Order requesting the Respondent to submit a reply to the Supplemental Filing submitted by the Complainant. New deadlines were determined for the Response and for the Decision. The Respondent filed the Supplemental Response on March 16, 2001. As the Panel shall ensure that the Parties are treated with equality and that each party is given a fair opportunity to present its case, it was decided to consider, subject to Paragraph 10 (d), both the late Supplemental filing and the late Supplemental Response, as the Respondent has provided sufficient reasons for the delay to the Panel. The Panel have requested a further extension to April 8, 2001.
The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint meets the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules").
4. Factual Background
The Complainant, Casa Editorial El Tiempo, was established under the form of a limited liability company on February 1, 1956, and registered before the Chamber of Commerce of BogotŠ on February 4, 1956. On May 23, 1997, the Complainant took its actual form of a corporation, by means of the Public deed Nį 1020 dated May 23, 1997, of the 10th Notary Public of BogotŠ, D.C., registered before the Chamber of Commerce of BogotŠ in May 29, 1997.
The Complaint is based upon the following trademark registrations in Colombia:
EL TIEMPO n. 56181 filed on 30/03/1994 in class 16
EL TIEMPO n. 137164 filed on 26/12/1996 in class 35
EL TIEMPO n. 155079 filed on 28/02/1994 in class 38
C.E.E.T. n. 206760 filed on 18/03/1998 in class 38
CASA EDITORIAL EL TIEMPO n. 228944 filed on 30/06/2000 in class 16
CASA EDITORIAL EL TIEMPO n. 14475 filed on 30/06/2000 in class 35
CASA EDITORIAL EL TIEMPO n. 228223 filed on 29/05/2000 in class 38
The Panel was provided with copies of the mentioned trademark certificates.
The Domain name "casaeditorialeltiempo.com" was registered on December 26, 1995. According to Network Solutions, Inc.'s Verification Response, Spider Webs Ltd is the registrant of "casaeditorialeltiempo.com".
5. Partiesí Contentions
The Complainant is devoted principally to the publication and printing of EL TIEMPO newspaper, and any other kind of newspapers, magazines, brochures and books that it decides to publish or print.
The principal product of the Complainant is EL TIEMPO newspaper, which appeared for the first time on 1911. According to the PRICE WATERHOUSE COOPERSís report rendered on February 25, 2000, the average of daily circulation of EL TIEMPO during 1999, was of 253,045 issues from Monday to Saturday, and of 477,452 issues on Sunday. The newspaper is distributed all over the Colombian territory, and abroad, especially in the cities of Miami and New York, in the United States of America.
The Complainant has a wide variety of products such as the magazines CARRUSEL, ELENCO, VIAJAR and MOTOR, distributed with EL TIEMPO newspaper, and the magazines ALO, ALO CASA, .G, ENTER, LUNA, WINNIE POOH, PRINCESITAS and GESTION, among others distributed through the Complainantís subsidiary company MULTIREVISTAS S.A. Likewise, since 1993, the Complainant publishes the business newspaper PORTAFOLIO, recognized as the first business and economy publication in Colombia. Besides, the Complainant publishes regional newspapers in different geographical areas of Colombia.
In the last years, the Complainant has entered into the Internet market, developing numerous web sites, through which the Complainant publishes the content of its magazines and newspapers, and other information in the worldwide web. The Complainant also has several web sites under construction at this moment, registered during year 2000.
The Complainant indicates that the Complainantís products and services are always commercialized including the trademark CASA EDITORIAL EL TIEMPO and that this trademark was registered for the first time in the Republic of Colombia, on August 14, 1956, under Certificate Nį 37.644. The Panel was provided with a copy of this certificate.
The Complainant contends the domain name CASAEDITORIALELTIEMPO.COM is identical, to the point of being misleading, with regard to the trademark CASA EDITORIAL EL TIEMPO, over which the Complainant holds rights.
The domain name that is the subject matter of this dispute does not add any element that differentiates it from the trademark CASA EDITORIAL EL TIEMPO, whose infringement is set forth by the Complainant. The relevant part of this domain name is CASAEDITORIALELTIEMPO, since the suffix .COM corresponds to the top level domain, which can not be appropriated by any Registrant. Likewise, the second level of the Respondentís domain name is confusingly similar to the Complainantís trademarks EL TIEMPO and C.E.E.T., over which the Complainant holds rights. This similarity is greater when the notoriety of EL TIEMPO trademark and of the product identified with the mentioned trademark are taken into consideration.
According to the Complainant, the trademarks CASA EDITORIAL EL TIEMPO and EL TIEMPO are well distinctive and famous in Colombia and in the countries where the Complainantís products are commercialized. Detailed data on the distribution, on the investments in promotion, issues published were provided to the Panel.
The Complainant has not licensed or by any means authorized the Respondent to use its trademark for any purpose. The Complainant is not aware that the Respondent has either used or prepared to use the domain name in connection with a bona fide offering of goods or services (Policy, para. 4(c)(i)).
On the contrary, the Respondent uses the domain name CASAEDITORIALELTIEMPO.COM as a direct link to the web page SPINTOPIC.COM, whose registrant is also the Respondent. The content of the latter page corresponds to a discussion forum about several actual issues. Besides, a sworn affidavit rendered by the undersigned before the 41st Notary Public of the city of BogotŠ, D.C., Republic of Colombia, where the content of the web page CASAEDITORIALELTIEMPO.COM as it was on December 13, 2000, is completely described, is attached hereto as Exhibit V.
The domain name that is the subject matter of this proceeding is being used only for traffic to the SPINTOPIC.COM web page. Thus, it does not make sense to give to a domain name the identical use that is already given to SPINTOPIC.COM, because this only evidences that the Respondent does not require to use the domain name under concern. The domain name CASAEDITORIALELTIEMPO.COM does not have a content of its own and consequently, does not have an autonomous existence.
The above clearly evidences that the Respondent does not have any legitimate interests in the registration and use of the domain name CASAEDITORIALELTIEMPO.COM, and that it registered this domain name solely for the purpose of misappropriating the goodwill of the Complainantís trademark.
Besides, the Complainant is not aware that the Respondent is or has been commonly known by the domain name under concern. (Policy, para. 4(c)(ii)).
This possibility is particularly difficult to occur in this proceeding, taking into account that both the Complainant and the Respondent are legal entities, which are obviously known by their legal names (in this case, CASA EDITORIAL EL TIEMPO S.A. and SPIDER WEBS LTD.). It is not usual for a company to be recognized by a different name, such as an alias or nickname, proper of individuals. Likewise, the name CASA EDITORIAL EL TIEMPO can not be a fantasy name created by the Respondent. This name corresponds to the commercial activity developed by the Complainant, explained before.
The Complainant contends that according to para. 4(c)(iii) of the Policy, the Respondent is not making a legitimate or fair use of the domain name, and its behavior demonstrates that its only intention is to mislead consumers who visit the web page CASAEDITORIALELTIEMPO.COM looking for information about the Complainantís products and services. The Respondent does not clarify to the visitors that its web page is not related to CASA EDITORIAL EL TIEMPO S.A. Additionally, the Respondent prevents the Complainant from reflecting its trademark in the world wide web, since it should be expected that the common consumer tries to locate a specified web site by combining the trademark he knows with the ".COM".
The Respondent registered the domain name CASAEDITORIALELTIEMPO.COM on September 19, 1999, well after the Complainant began using the CASA EDITORIAL EL TIEMPO trademark and applied for registration of the mentioned trademark in several countries. As explained before, the first registration of the trademark CASA EDITORIAL EL TIEMPO dates from 1956.
The Respondent has registered the domain name CASAEDITORIALELTIEMPO.COM for the purpose of selling, renting, or otherwise transferring the domain name registration for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name. (Policy, para. 4(b)(i)).
The Complainant, in May, 2000, decided to build an internet site to give institutional information to the public about CASA EDITORIAL EL TIEMPO S.A., since its previous domain names were related to the Complainantís specific products and services. The logical and obvious name for that purpose was CASAEDITORIALELTIEMPO.COM, and the Complainant conducted a search before Network Solutions Inc, in order to determine if the chosen domain name was available, finding out that it was already registered in favor of the Respondent.
In June 2000, Mr. Javier del Castillo, an employee of the Complainant, proceeded to contact the Respondent and was informed in a telephone call that the person in charge was Mr. Steve Thumann. Consequently, Mr. Javier del Castillo contacted Mr. Steve Thumann by telephone and asked him whether or not he was interested in selling the mentioned domain name, but Mr. Steve Thumann answered that he would be interested only if an irresistible offer was made.
After said telephonic conversation, Mr. Javier del Castillo sent an electronic message to Mr. Steve Thumann, on June 23, 2000, with the following content:
"Hi Steve, I am the one interested on the domain casaeditorialeltiempo.com. Let me know if you own it and how much you want for it, thanks.
"Javier del Castillo."
To this message, Mr. Steve Thumann answered the following, on June 27, 2000:
"We have several addresses registered. We develop websites, and develop e-commerce sites. We are consumer advocates/consultants.
"To be honest with you we have not sold an address before. We are in negotiations (sic) of leasing .com addresses.
"You are welcome to make an offer for whatever transaction meets you specific needs.
In response to the previous message, Mr. Javier del Castillo wrote a new message to Mr. Steve Thumann on June 28, 2000, with the following text:
"Well, if you own the domain name www.casaeditorialeltiempo.com I am willing to pay us$500,oo as soon as you make it available to me or the one ask you to.
The same date, Mr. Steve Thumann answered the offer, as follows:
"Unless you make us an offer we can not refuse, we prefer to lease the address to you. The market at this time does not support the value we place on the addresses. We are in a position to built and host your site if needed.
Also on June 28, 2000, Mr. Javier Del Castillo sent a final message to Mr. Steve Thumann:
"How much do you want for it? (sold, not leased)
"It is hard for me to know that do you consider an offer you canít refuse."
On June 29, 2000, Mr. Steve Thumann answered the cited message, as follows:
"Your are welcome to make an offer. When you offer an appropriate amount; I will respond.
Printouts of the transcribed electronic messages, dated June 23, 27, 28 and 29, 2000, were provided to the Panel.
Taking into account the above, the Complainant sent a letter to the Respondent on July 31, 2000, serving it with its previous industrial property rights over the trademark CASA EDITORIAL EL TIEMPO, EL TIEMPO and C.E.E.T. and stating the Complainantís will to compensate the Respondent for the expenses incurred for the registration of the domain name CASAEDITORIALELTIEMPO.COM. Notwithstanding, the Respondent did not answer this communication.
It is clear from the cited messages that the Respondent wanted to sell or lease the domain name CASAEDITORIALELTIEMPO.COM for a value exceeding the out-of-pocket costs directly related to the domain name. The requirement of the Respondentís representative of an amount superior to the US$500.00 offered by the Complainant, evidences the bad faith of the Respondent in the registration of the mentioned domain name.
The Respondent registered the domain name that is the subject matter of this proceeding, in order to prevent the Complainant from reflecting its trademark in the top level domain .COM. (Policy, para. 4(b)(ii)). With this respect, the Complainant notes that the domain name CASAEDITORIALELTIEMPO.COM is used exclusively as a link to another web page of the Respondent, and consequently, it does not have an autonomous use. This leads the Complainant to conclude that the Respondent does not need the domain name for a bona fide offering of goods or services, and that it has registered the domain name in bad faith, knowing that the expression CASA EDITORIAL EL TIEMPO is a notorious trademark in Colombia and the other countries where the Complainantís
products and services are commercialized.
The Respondent has numerous registered domain names in the top level domains including some domain names incorporating distinctive and famous trademarks, i.e., premierpontiacbuickgmc.com, riveroaks-jeep.com, dickpoehondapontiac.com, bluecross-blueshield.com, rogerbeaslymazda.com, and the subject of this proceeding, www.casaeditorialeltiempo.com, among others.
The Complainant concludes that, in light of the above, the Respondent does not have rights and/or legitimate interests in the domain name that is subject to this proceeding, and that it does not fulfill any of the circumstances presented in para. 4(c) of the Policy, or any others for the same purpose.
Respondent will concede that the domain name incorporates the words, which have been used to identify Complainantís corporate, parent entity in Colombia.
It further appears that Complainant has sought some protection of this combination of words as they are used in its native country, and in the geographical region. It is assumed that counsel for Complainant understands his ethical duty to accurately state relevant facts, and therefore Respondent has taken, at face value, the Spanish language documents which purport to be trademark registrations. This does not fully satisfy Complainantís burden of proof as to the likelihood of confusion as to its services and products.
The Respondent states that all of the words in the disputed internet registration are common Spanish words, used daily in conversation. According to the Respondent they cannot be protected as unique words which describe a product. Therefore, the combination of words must be so closely identified with the products of the Complainant that their use, in this exact combination, would cause a typical consumer to immediately and exclusively think of the products or services of the Complainant.
A careful reading of the Complaint discloses that Complainant does not conduct any significant business before the public as "Casa Editorial El Tiempo". To the contrary, the public knows its primary product as "El Tiempo", which is the name of its newspaper publication. Several other publications are discussed on page 6 of the Complaint, however, none of them use any combination of the words that comprise Respondentís internet registration - "casaeditorialeltiempo.com".
Had Respondent registered the name "eltiempo.com" Complainant might have at least an arguable point in connection with this single issue - similarity of the name. By Complainantís own admission, however, it is not commonly known to the public as "Casa Editorial El Tiempo" in connection with a trade or business. This appears to be only the name of a parent entity.
Any use, or intended use, of the domain address by Respondent that does not compete with or disparage the business interests of Complainant or any other party who might be owner of this as a trade name, is legitimate.
As noted in the Complaint, this top level domain is linked to a consumer advocacy site known as Spintopic.com. Spin Topic is a non-commercial site devoted exclusively to the dissemination of information important to consumers, and a forum for the open exchange of views and ideas on a wide range of subjects. A consumer advocacy and information site such as Spin Topic thrives on visitors, or "hits", as they are known in the common parlance. In order to attract the largest volume of visitors and create the dynamic effect desired for this activity, it is necessary to attract internet surfers who might not otherwise be aware of the site. One strategy employed by Respondent to accomplish this purpose was to register a wide variety of names, and have them pointed to the Spintopic site. Respondent is happy to report that this strategy has thus far been successful, in that almost 200,000 visitors have visited the site since its inception last year, many of whom have benefitted from information about consumer issues, and have left their comments for others to enjoy. It is important to note that Respondent sells nothing on the site, and does not stand to directly benefit in any economic way from activity at the site.
This use of the disputed internet address to spintopic.com was in development well before Complainant unsuccessfully attempted to persuade Respondent to sell the address disputed in this case.
Complainant has offered no probative evidence of "bad faith", as set forth in ICANN Policies. Section 4(b) suggests four types of evidence of bad faith registration, none of which apply to Respondent:
(a) registration for resale - There is no evidence of Respondentís intent to resell the subject address at the time of registration. As is clear from the Complaint (pages 15 and 16), it was the Complainant who initiated discussion of a sale of the site. Mr. Thumannís response to repeated inquiries was tepid, at best. While he did not totally rule out the sale of the site, as no reasonable person would, he made his lack of interest in negotiations quite clear. One need only review the record of communications to confirm this. It would be incongruous for a Complainant to initiate discussions of sale and then claim that it was the Respondent who was acting in bad faith. Respondent has never marketed the subject internet address to Complainant, or anyone else.
(b) blocking use by trademark owner - this standard is subject to misinterpretation, and must be considered in the proper context. It literally would represent a strict liability standard and would result in an automatic transfer of any name in dispute, if the only test is whether the Complainant is unable to use the name. Clearly, there can be only one registrant per name. Thus, for this policy statement to make any sense, there must be evidence of the purpose of the Respondent, and it must be proven by some behavior that evidences a particular desire or purpose to deprive the Complainant of the site. Here, Respondent registered the site almost a year before any contact from Complainant. There has been no demonstration of an animus, or desire to divert legitimate business from Complainant. In fact, it would take a great leap of imagination to infer anything but the fact that Complainant was far from the minds of the Respondentís personnel until this dispute was initiated. The requisite intent of pattern has not been proven by Complainant.
(c) disruption of the business of a competitor - Complainant and Respondent are not competitors, so this factor is not relevant.
(d) use of the web site in a confusing way for commercial gain - regardless of what Complainant or any other party might consider a "confusing" use of the subject internet address, there is no evidence of a use for "commercial gain". This is an essential element of evidence of bad faith. If Respondent is making a fair, non-commercial use of the name in question, there is simply no bad faith.
Responded provided the panel with a selection of jurisprudence about the concept of "Commercial use" of a web site stating that Complainant is undoubtedly entitled to certain protections with respect to unfair commercial use of a business name that is identical or confusingly similar to its name. However, according to the Respondent, there is no proprietary right to a name, and even a trademark is not a property right. Trademark protection statutes, at least in the United States, do not elevate trademarks to the status of property, they merely protect the registrant from improper use. Even if a party has limited rights to prevent unfair competition or dilution of a trademark or trade name, any person may make legitimate, non-commercial use of trademarks without violating the rights of a registrant. It has been held that a party is entitled to use a web site to comment on issues of public policy, and what it considers to be key consumer issues. Complainant might have a basis for its position if Respondent were selling newspapers or magazines at the site, or otherwise using it for a commercial benefit that would be in direct competition with Complainant. This has not been asserted, and is not the case.
The Respondent did indicate in e-mail responses to overtures by Complainant that his company was willing to do web development projects for Complaint, or that some offer for the site in question might be too attractive to refuse. However, this can not be considered the active sale and marketing of anotherís trade name as envisioned by the WIPO policies.
It is important to note that Complainant has successfully registered numerous names that reflect the actual names of its publications. It has not been blocked from the internet, and has numerous addresses at its disposal. In fact, the address casaeditorialeltiempo.com.co which reflects the country of origin for Complainant would seem a much better choice than the address that it is seeking to wrestle away from Respondent.
In summary, Complainant has failed to meet its burden of proof on any of the elements required to mandate transfer of the disputed address. Respondentís use of the address is a legitimate, non-commercial use of the address, which has as much dignity and necessity as that of Complainant, especially considering that Complainant has many other sites from which it apparently is successful in promoting its publications.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: "A Panel shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service 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.
6.1. Domain name identical or confusingly similar
The Complainant has provided evidence of ownership of trademark registrations for EL TIEMPO and CASA EDITORIAL EL TIEMPO, stating that the latter was registered "for the first time in the Republic of Colombia on August 14, 1956" and "the Complainant products and services are always commercialized including the trademark CASA EDITORIAL EL TIEMPO".
It is noted that documents provided in the Complaint do not include proofs of the renewals of such first registration until the date of registration of the domain name "casaeditorialeltimpo.com". After some debate, the Panel decided that the domain name is anyway confusingly similar with the trademark EL TIEMPO registered since February 28, 1994 and, therefore, there was no need to take the debate further.
Furthermore, the Policyís only requirement is that the Complainant should possess rights in a mark, which is identical or confusingly similar to the disputed names. There is no mention in the Policy of goods and services to which the marks may relate.
In view of the above, the Panel finds that the Complainant has proved that the Domain Name is identical or confusingly similar to, obviously excluding the suffix ".com", the trademark of the Complainant according to paragraph 4(a)(i) of the ICANN Policy.
6.2. Rights and legitimate interest
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the dispute domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
(a) He has made 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 prior to the dispute;
(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The instant domain name is presently merely linked to the web site of the Respondent. No other use or preparation to use of the domain name in connection with a bona fide offering of goods or services prior to the dispute was indicated to the Panel.
There is no relation between the Respondent and the Complainant and Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use Complainantís trademark and name under any circumstance.
The Panel finds that the claim of a non-commercial use of the domain name is not borne out by the evidence, because the respondent holds this and other domain names for lease. Respondent offers to build and hold web sites, as per the transcript of the mail dated June 28, 2000.
Furthermore, the Respondent declares in the Response that the instant and other domain names were registered "in order to attract the largest volume of visitors and create the dynamic effect desired" as "it is necessary to attract internet surfers who might not otherwise be aware of the site". "One strategy employed by Respondent to accomplish this purpose was to register a wide variety of names, and have them pointed to the Spintopic site. Respondent is happy to report that this strategy has thus far been successful, in that almost 200,000 visitors have visited the site since its inception last year".
The above statement and conduct of the Respondent appears to be in conflict with a fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark as per paragraph 4 (c)
It is noted that the cases quoted by Respondent in the Response referring to a "criticism site" are not pertinent, because in such cases the site was used to criticize the trademark holder, and the use of the trademark for such purpose was fair use to advise the internet user of the subject matter of the site.
The Panel therefore finds that Respondent has no rights or legitimate interests in respect of the Domain Name, according to paragraph 4(a)(ii) of the ICANN Policy.
6.3. Registration and Use in Bad Faith
For the purpose of Paragraph 4(a) (iii) of the Policy, the following circumstances set forth in Paragraph 4(b) of the Policy, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that the holder has registered or has 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 the holderís documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has 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 the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holderí s website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on the holderís website or location.
Panel finds Paragraph 4 (b)(i) applicable in the instant case since the offer to lease the domain name "casaeditorialeltiempo.com" and the explicit request for an "offer I can't refuse" shows an intent to transfer rights to the site for amounts in excess of the out of pocket cost. The fact that the respondent offers to lease rather than sell is to be considered immaterial.
The panel notes that the term "Casa Editorial" is a commercial expression, equivalent to "publishing house" in English but it is somewhat out of style in both Spanish and English and sounds old fashioned. It would be most unlikely, not to say impossible, that a publisher of a newspaper or any other publication would incorporate under a name such as "Casa Editorial...", precisely because of its old fashioned connotations.
Consequently, the panel finds that is was practically impossible that CASAEDITORIALELTIEMPO.COM could have been adopted as a domain name without prior knowledge of the existence of an entity with that name, an entity which publishes a newspaper in Colombia, among other things.
The Panel therefore also finds that the registration of the "casaeditorialeltiempo" domain name was not a coincidence but reflects bad faith registration and use under Paragraph 4(b)(iv).
In view of the above, the Panel finds that Respondent has registered and is using the Domain Name in bad faith, according to Paragraph 4(a)(iii) of the ICANN Policy.
In light of the foregoing, the Panel decides that the Domain Name registered by the Respondent is identical or confusingly similar to the Complainant's trademarks, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name has been registered and is being used in bad faith.
Accordingly, the Panel requires that the registration of the Domain Name "casaeditorialeltiempo.com" be transferred to the Complainant.
Mr. Luca Barbero
Ms. Dana Haviland
Mr. Luis H. de Larramendi
Dated: April 8, 2001