WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Telefonica Del Peru SAA V. netEGG.COM

Case No. D2001-1248

 

1. The Parties

Complainant is Telefonica del Peru SAA ("Complainant") a company organized and existing under the laws of the Republic of Peru, with principal place of business at Av. Arequipa 1155, 6į Piso, Santa Beatriz, Lima, Peru.

Respondent is netEGG.COM ("Respondent"), whose address, as provided by the Registrar, at 1437 Rhode Island Ave NW 502, Washington, DC 20005, U.S.A.

 

2. The Domain Name and Registrar

The domain name at issue is <cablemagico.com> (the "Domain Name") which is registered with The Ait Domains Corporation ("the Registrar"), with principal place of business at Fayetteville, North Carolina, United States of America. The Registrar has voluntarily adopted the Uniform Domain Name Dispute Resolution Policy (the "Policy" or the "UDRP") and has selected the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") as a dispute resolution services provider.

 

3. Procedural History

3.1 A Complaint was submitted electronically to the WIPO Center on October 15, 2001, and the signed version was received on October 22, 2001. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated October 19, 2001.

3.2 On October 24, 2001, the Registrar confirmed by e-mail that the Domain Name is registered with it, is currently in active status, and that the Respondent is the current registrant of the Domain Name. The Registrar also forwarded the requested Whois details, and confirmed that a copy of the Complaint had been sent to it by the Complainant and that the Policy is in effect.

3.3 The WIPO Center determined that the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Sole Panelist has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the UDRP, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 the Uniform Rules, and the Supplemental Rules.

3.4 On October 30, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant and the Registrar), setting a deadline of November 19, 2001, by which the Respondent could file a Response to the Complaints. The Commencement Notification was transmitted to the Respondent by courier and by e-mail to the e-mail addresses indicated in the Complaint. In any event, evidence of proper notice is provided by the evidence in the record of the Respondentís participation in these proceedings.

3.5 On November 5, 2001, Mr. Louis Rosenfeld, person that has been acting on behalf of the Respondent, sent an e-mail communication to Complainant, with carbon copy to the Center, making an offer to come to a monetary agreement over the Domain Name.

3.6 On November 20, 2001, the Center advised Respondent that it was in default for failing to file its Response. No Response has been received.

3.7 On December 10, 2001, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Mr. Sergio Rodriguez Castillo (the "Sole Panelist"), the Center notified the parties of the appointment of a single-member panel consisting of the Sole Panelist.

3.8 On December 27, 2001, the Center notified the parties that, as per request of the Sole Panelist, the deadline for rendering the final decision had been extended to January 5, 2002.

3.9 On January 4, 2002, based on Paragraph 12 of the Uniform Rules, the Sole Panelist requested for certain clarifications from the Complainant regarding the relation between it and a company named "CPT-Telefonica del Peru, S.A.", company that registered the trademarks referred to in paragraph 4.1 below.

3.10 On January 10, 2002, the Sole Panelist received a reply from Complainant, informing that it and "CPT-Telefonica del Peru, S.A." are the same legal entity.

 

4. Factual Background

Given the absence of a Response, the following facts presented by Complainant are undisputed:

4.1 Complainant has registered the service trademark "cable magico" in Peru (Complaint, Exhibit G), by the following certificates issued by the pertinent authority [1]:

i. Certificate 011146 dated June 17, 1997, in force until June 17, 2007, consisting in the words "CABLE MAGICO" written in characteristic letters and with a logo, covering telecommunications services under International Class 38.

ii. Certificate 011098 dated June 16, 1997, in force until June 16, 2007, consisting in the words "CABLE MAGICO" written in characteristic letters and with a logo, covering telecommunications services under International Class 38.

iii. Certificate 9188 dated December 9, 1996, in force until December 9, 2006, consisting in the words "CABLE MAGICO" written in characteristic letters and with a logo, covering construction, repair, maintenance and inspection services under International Class 37.

iv. Certificate 8256 dated September 6, 1996, in force until September 6, 2006, consisting in the words "CABLE MAGICO" written in characteristic letters and with a logo, covering construction, repair, maintenance and inspection services under International Class 37.

v. Certificate 9667 dated January 22, 1997, in force until January 22, 2007, consisting in the words "CABLE MAGICO" written in characteristic letters and with a logo, covering construction, repair, maintenance and inspection services under International Class 37.

vi. Certificate 8255 dated September 6, 1996, in force until September 6, 2006, consisting in the words "CABLE MAGICO" written in characteristic letters and with a logo, covering construction, repair, maintenance and inspection services under International Class 37.

vii. Certificate 8188 dated August 29, 1996, in force until August 29, 2006, consisting in the words "CABLE MAGICO" covering construction, repair, maintenance and inspection services under International Class 37.

4.2 These marks will be referred hereinafter as the "Cable Magico Marks".

4.3 Complainant has registered the domain name <cablemagico.com.pe> on September 10, 2000, Complaint, Annex G.

4.4 Respondent registered the domain name at issue on November 13, 2000. Complaint, Annex B.

4.5 As evidenced in Complaint, Exhibit D the parties held the following communications:

i. On April 27, 2001, Complainant, through Mr. Marcelo Neira but without identifying himself as Telefonica del Peru, sent an e-mail message to the e-mail address "mailto:buyit@netegg.com" stating that he was aware that the Domain Name was for sale for US $980.00; declaring its interest in purchasing it, and offering US$800.00 for such purposes.

ii. On that same date, Respondent sent an e-mail message without identifying the name of the sender, confirming that the Domain Name was for sale, but that its price was US $19,990.00; and providing all the required information in order to purchase it.

iii. On April 28, 2001, Mr. Neira sent another e-mail message to Respondent, providing the information and URL where it has learned that the Domain Name was for sale. On that same date, Respondent sent the exact same reply sent on April 27, 2001.

iv. On May 7, 2001, Respondent sent an e-mail message to Mr. Neira, asking him to "make an offer for this domain", i.e., the Domain Name.

v. On May 8, 2001, Mr. Neira replied to Respondent declaring that he was interested in the Domain Name but that it could not pay more than US $1,300.00. On that same date, Mr. Louis Rosenfeld, on behalf of Respondent, replied to Mr. Neira asking him where was he located and whether he owned a company with the name of the Domain Name.

vi. On May 15, 2001, Mr. Neira replied to Mr. Rosenfeld, informing him that he was in Peru and that it did own a company named "Cable Magico". Mr. Rosenfeld replied stating that "To own <cablemagico.com> could be one of your best investments for your company." inviting Mr. Neira to "make a good offer" since he would "not let go it (i.e., the Domain Name) for less than $10,000.00

vii. On May 16, 2001, Mr. Neira made his final offer for US$5,000.00; Mr. Rosenfeld replied requesting to Mr. Neira to "make it $7,500 and <cablemagico.com> is yours". Mr. Neira refused to make another offer and insisted in buying it for US$5,000.00

viii. After that date, Respondent, via Mr. Rosenfeld, sent e-mail messages to Mr. Neira on May 16 and May 21, offering him to accept a partial payment of US$5,000.00 and the remaining US$2,500.00 at a later date. Complainant submitted the Complaint on October 15, 2001

ix On November 5, 2001, Mr. Louis Rosenfeld, sent an e-mail message to Complainant, stating that, his lawyer had advised him to come to an agreement with respect to the Domain Name, and due to the fact that Complainant trademarks would be "accepted by WIPO"; for that reason, it was ready to accept US$300.00 for the Domain Name. There have not been further communications between the parties.

4.7 The authenticity of all these electronic communications has not been disputed by Respondent.

 

5. Partiesí Contentions

5.1 Complainant contends that, since the Domain Name is identical to the Cable Magico Marks and the Peruvian domain name <cablemagico.com.pe> it is confusingly similar with the telecommunications services it provides.

5.2 Complainant contends that Respondent lacks the legitimate right or interest over the use of the Domain Name, since it is not the holder of any registered trademark, nor the right to its use. Complainant further contends that Respondent is not well known, nor can it be identified with the trademark CABLE MAGICO and that Respondent registered the Domain Name with the purpose of selling it to Respondent or a competitor; arguing that such purpose has be evidenced by the electronic mails, whereby Respondent asked for US$19,990.00 for the Domain Name, a price that, the Complainant contends, exceeds the costs directly related to the maintenance of the Domain Name.

5.3 Complainant contends that Respondent is using the Domain Name in bad faith, since the inability of Complainant to access the Domain Name is causing serious damage to an appropriate development of business on the network. Further, Complainant contends that the Respondent is presenting adult content on a web site, whereby reference is made to a "cable magico" with the intention of attracting Internet users for profit, while tarnishing the prestige of the telecommunications services identified by the Cable Magico Marks, since it misleads the consumer regarding its corporate origin.

5.4 Complainant requests that the Panel issue a resolution asking the Registrar to transfer the Domain Name from Respondent to it.

5.5 Respondent failed to contest Complainantís assertion that it has registered the Cable Magico Marks or that the Domain Name is identical with and confusingly similar to the Cable Magico Marks.

5.6 Respondent failed to contest Complainantís assertion that Respondent has no rights or legitimate interest in the Domain Name.

5.7 Respondent failed to contest Complainantís assertion that Respondent registered and used the Domain Name in bad faith.

 

6. Discussion and Findings

6.1 The Sole Panelist considers that the Respondent, by registering the Domain Name with the Registrar, agreed to be bound by all terms and conditions of its Service Agreement, and any pertinent rule or policy, and particularly agreed to be bound by the Policy (incorporated and made a part of the Service Agreement by reference), which request that proceedings be conducted according to the Rules and the Supplemental Rules. Therefore, the dispute subject matter of this proceeding is within the scope of the above-mentioned agreements and Policy, and this Sole Panelist has jurisdiction to decide this dispute.

6.2 Furthermore, the Sole Panelist considers also by entering into the above-mentioned Service Agreement, the Respondent agreed and warranted that neither the registration of its domain name nor the manner in which it may intend to use such domain name will directly or indirectly infringe the legal rights of a third party, and that in order to resolve a dispute under the Policy, the Respondentís domain name registration services may be suspended, cancelled or transferred.

6.3 The Sole Panelist also considers it particularly essential for dispute resolution proceedings that the fundamental due process requirements be met. Such requirements include that Respondent have being given adequate notice of proceedings initiated against them; that the parties may have a fair and reasonable opportunity to respond, exercise their rights and present their respective cases; that the parties be notified of the appointment of this Sole Panelist; and, that both parties be treated equally in these administrative proceedings.

6.4 In the case subject matter of this proceeding, the Sole Panelist is satisfied with the manner in which these proceedings have been carried out, 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.

6.5 Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use for determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law it deems applicable."

6.6 Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(1) 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

(2) that the Respondent has no legitimate interests with respect to the domain name; and

(3) that the domain name has been registered and used in bad faith.

6.7 Although Respondent has failed to file a Response or to contest the Complainantís assertions, the Sole Panelist will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.

6.8 Due to said default by the Respondent, the Sole Panelist is directed to decide this administrative proceeding on the basis of the Complaint, as provided by paragraph 14(a) of the Uniform Rules. Therefore, certain factual conclusions may be drawn by the Sole Panelist on the basis of Complainantís undisputed representations and the Respondent default (Uniform Rules 14(b)).

6.9 Identity or Confusing Similarity

6.9.1 Complainant contends that it has several registrations of the Cable Magico Marks, the earliest dated August 29, 1996. Complainant further contends that the Domain Name is identical with and confusingly similar to the Cable Magico Marks pursuant to Policy paragraph 4(a)(i), and that Respondent has misappropriated the terms Cable Magico, entirely, as the dominant portion of the Domain Name.

6.9.2 Respondent has not contested the assertions by Complainant that it has valid registrations of the Cable Magico Marks. Therefore, the Sole Panelist finds, for the purpose of this proceeding, that Complainant has enforceable rights in the Cable Magico Marks, since August 1996.

6.9.3 The fact that the Cable Magico Marks are not trademarks registered in the United States but in Peru, is irrelevant for the purposes of paragraph 4(a)(i) of the Policy, since it only requires for the domain name to be similar or confusingly similar to a trademark over which the Complainant has rights.

6.9.4 The Sole Panelist notes that the Domain Name was registered by Respondent in November 2000. Therefore, the Sole Panelist determines that Complainantís rights over the words "cable magico" arose before Respondentís registration of the Domain Name.

6.9.5 Further, Respondent does not dispute that Domain Name is identical or confusingly similar to the Cable Magico Marks in which the Complainant has rights.

6.9.6 The Sole Panelist notes that the entirety of the word group "cable magico" is included in the Domain Name, the only differences being that the Domain Name eliminates the spaces between the two words and that it employs lower case letters. As previous panels had resolved in the past [2], the Sole Panelist concludes that, considering that domain names are not case sensitive, and that the elimination of spaces is a technical requirement and common practice when registering a domain name, the use of the lower letter format in the Domain Name and the elimination of spaces between the two words, is irrelevant when comparing the similarities among the Domain Name and the Cable Magico Marks.

6.9.7 Therefore, the Sole Panelist finds that the Domain Name is confusingly similar to the Cable Magico Marks, pursuant to the Policy, paragraph 4(a)(i).

6.10 Rights or Legitimate Interest.

6.10.1 Complainant contends that Respondent has no rights or legitimate interest in the Domain Name.

6.10.2 The Policy, paragraph 4(c) provides for three non-exclusive ways for a Respondent to demonstrate its rights to and legitimate interest in a Domain Name:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making 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 or service mark at issue.

6.10.3 Although the Policy, and paragraph 4(a), clearly states that it is for the Complainant to prove each of the elements provided therein, it is clear by the language used in paragraph 4(c) of the Policy, that with respect to paragraph 4(a)(ii) the burden of demonstrating such right or legitimate interest falls on the Respondent.

6.10.4 In the present case, the Sole Panelist has not received from Respondent any evidence that it has used the Domain Name, in any manner or form (including non-commercial or fair use), before the initiation of the dispute, nor that Respondent was preparing to use it. Notwithstanding the foregoing, the Complainant does mention that the Respondent has directed the Domain Name to a website that presents adult content (the "Adult Site"), whereby the words "cable magico" appear.

6.10.5 The question to be answered now, is whether directing the Domain Name to the Adult Site presenting, when accessed, the legend " Ďcablemagicoí cablemagico.com conectate al mundo porno por un cable", which can be translated as: "Ďcablemagicoí cablemagico.com contact the porn world via cable" (the "Legend") constitutes a use in connection with a bona fide offering of goods or services, as provided by paragraph 4(c)(i) of the Policy.

6.10.6 It is worth mentioning that it is not contested whether the operation of the Adult Site or any website of adult content is a legitimate form of Internet business; but whether directing the Domain Name to it and its inclusion, together with the Legend, can be referred to as a bona fides offering of services or goods.

6.10.7 It is the Sole Panelistís opinion that in absence of any other circumstances, it would be hard to determine the intentions of Respondentís use in directing the Domain Name to the Adult Site. There is, however, a precedent also involving the Respondent [3]. Such case is relevant, since the Respondent in it acts in exactly the same manners describe in the Factual Background above. There, as in this case, the complainant contacted respondent requesting information about a domain name. Respondent answered stating that the selling price had increased to $29,990; subsequently, respondent rerouted the site to a site of adult content called <prostitutas.com>. The Sole Panelist finds these parallelisms significant in order to infer the intention of the Respondent. As previous panels have concluded, the fact that paragraph 4(c)(i) of the Policy refers to "bona fide" (i.e., good faith) offerings, occasionally leads, to the evaluation of common factors among paragraphs 4(c) and 4(b) which refer to bad faith.

6.10.8 It has been stated by previous panels, that the registration and offering for sale of domain names may constitute, under certain circumstances, a legitimate interest. The Sole Panelist agrees with such statement [4]. Nonetheless, in the present case, the recurrent behavior of Respondent in at least another documented case, makes the Sole Panelist conclude that such use of the Domain Name cannot be considered a bona fide offering as required by paragraph 4(c)(i) of the Policy. Such finding, when weighed together with the absence of any evidence submitted by Respondent to the contrary, lead us to conclude that the sole purpose of Respondent in registering the Domain Name was to sell it; hence, it lacked any legitimate interest over the Domain Name as provided by paragraph 4(c)(i) of the Policy.

6.10.9 Additional corroboration of Respondentís lack of legitimate interest in the Domain Name can be inferred from the fact that, when Respondent felt that the probabilities of succeeding in these proceedings were against him, it tried to contact Complainant in order to offer it the Domain Name for an amount significantly smaller that the one originally requested.

6.10.10 With respect to the Policy, paragraph 4(a)(ii) and (iii), Respondent has not produced any evidence that it has been commonly known by the Domain Name nor that it was making a non-commercial or fair use of the Domain Name without intent to commercially profit from [5].

6.10.11 Based on the foregoing, the Sole Panelist finds that Respondent has no rights or legitimate interest in the Domain Name, pursuant to the Policy, paragraph 4(a)(ii).

6.11 Bad Faith

6.11.1 Complainant contends that Respondent registered and is using the Domain Name in bad faith, in violation of the Policy, paragraph 4(a)(iii).

6.11.2 The Policy, paragraph 4(b), sets forth four non-exclusive, non-limitating criteria for Complainant to show bad faith registration and use of domain names:

(i) circumstances indicating that you [Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you [Respondent] have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you [Respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you [Respondent] have intentionally attempted to attract, for commercial profit, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product.

6.11.3 Complainant sets forth facts that affirm, show the bad faith of Respondent. In its opinion, the inability of Complainant, to access the domain name, hence suffering serious business damage, and the fact that Respondent has rerouted the Domain Name to the Adult Site, therefore tarnishing the prestige of the Cable Magico Marks, are acts of bad faith.

6.11.4 Furthermore, Complainant contends that Respondent registered the Domain Name with the intention of selling it to Complainant, for a price exceeding the costs directly related to the maintenance of the domain name.

6.11.5 None of these contentions were disputed by Respondent.

6.11.6 The Sole Panelist considers that Complainant has not produced significant evidence in order to prove its two first arguments, and that its mere assertion are not appropriate in order to establish bad faith, if any, of Respondent. Therefore, only the third will be analyzed.

6.11.7 It can be inferred from the undisputed Factual Background, that Respondentís main activity is to sell domain names, activity that by itself should neither be considered as illegitimate, nor as a bad faith behavior. To put it in the words of a previous panel (with which the Sole Panelists concurs): "There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent." [6]

6.11.8 As previously stated, it could be argued in favor of companies dedicated to registering and selling domain names, that such conduct is licit. This, however, should not be considered, when such companies operate by registering trademarks and then selling them to their owners. That kind of conduct has repeatedly being considered constituting bad faith within the meaning of paragraph 4(a)(iii) of the Policy.

6.11.9 In the present case, the Sole Panelist cannot overlook the pattern of conduct demonstrated by Respondent in a previous case. As it has done in the past, since its very first e-mail, Respondent requested for an amount that significantly exceeded its out-of pocket costs. It is significant that the Respondentís representative, Mr. Louis Rosenfeld, limits his first personal communication to inquiring whether Respondent had a company with the name of the Domain Name. Further, Respondentís action of redirecting domain names to the Adult Site, as a pressuring measure, is an additional factor that indicates a inadmissible way of conduct. Moreover, the fact that Respondent approached Complainant in an attempt to settle this Complaint for a small amount of money in comparison to what it had originally asked for aware that, in its own words "it seems your trademark in Peru will be accepted by WIPO", clearly shows that Respondent was fully aware that its conduct would not be endorsed by an arbitration panel under the UDRP, and that it was only with the Domain Name, taking advantage of Complainantís interest in it and hoping to make a lot of money in the transaction. Considering all these facts, Sole Panelist deduces that it is Respondentís common practice to register domain names and then wait for trademark owners to approach it in order to sell them for large sums.

6.11.10 It is the Sole Panelistís opinion that Respondentís behavior denotes bad faith under the Policy paragraph 4(b)(i). Therefore, the Sole Panelist finds that the Domain Name was registered and used in bad faith, pursuant to the Policy, paragraph 4(a)(iii).

 

7. Decision

Therefore, and in consideration of the Complaintís compliance with the formal requirements for this domain name dispute proceeding, the factual evidence and legal contentions that were submitted, the conclusive confirmation of the presence of each of the elements contemplated in Paragraph 4 (a) (i), (ii), and (iii) of the Policy, and based on the statements and documents submitted and in accordance with the Policy, the Rules and the Supplemental Rules and principles of law, as directed by paragraphs 14 (a) and (b) and 15 (a) of the Rules, this Sole Panelist decides:

(1) that the Domain Name registered by Respondent is confusingly similar to Complainantís Cable Magico Marks;

(2) that Respondent has no rights or legitimate interests with respect to the Domain Name; and

(3) that the Domain Name has been registered and is being used in bad faith by the Respondent.

Therefore, the Sole Panelist requires, pursuant to what has been provided under Paragraphs 3 (c) and 4 (i) of the Policy, that the domain name <cablemagico.com> be transferred to the Complainant.

 


 

Sergio Rodriguez Castillo
Sole Panelist

Dated: January 17, 2002

 


Footnotes:

1. It is worth mentioning that the details of these trademark registrations did not match those of the photocopies of the corresponding certificates. The Sole Panelist determined to use the dates of the certificates. Complainant also mentions a certificate no. 011098, however, since it did not provide copy of such certificate, the Sole Panelist has determined not to include it as part of the factual background.

2. See CBS Broadcasting Inc. v. Worldwide Webs, Inc. Case No. D2000-0834.

3. See Radiodifusora del Centro Sociedad Anonima v. Name for Sale $980/ Louis Rosenfeld trading as netEGG Internet Case No. D2001-0634.

4. See Allocation Network GmbH v. Steve Gregory Case No. D2000-0016.

5. In an independent visit by the Sole Panelist to the Adult Site, it found out that, in fact, the opposite is true, since when attempting to access the site by clicking the word "Entrar" ("Enter") the site automatically redirects you to another web page requesting for a credit card number.

6. See footnote 2 above.