WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Todito.com, S.A. de C.V. v. Michele Dinoia
Case No. D2002-0620
1. The Parties
The Complainant is Todito.com, S.A. de C.V., a company located in Mexico, D.F., Mexico, with its legal Head Office in Insurgentes Sur 3579, Torre I I Piso 3, Col. Tlalpan La Joya, Mexico, D.F., Mexico (the "Complainant").
The Respondent is Michele Dinoia, Szk.com, who is domiciled in Via Trilussa 11, Pineto, 64025, Italy (the "Respondent").
2. The Domain Name and Registrar
The domain name at issue is <hechos.com>. The Registrar is NameScout Corp, with domicile in Whitepark House, White Park Road, Bridgetown, Barbados.
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received the Complaint of the Complainant on July 4, 2002, by email and on July 9, 2002, in hardcopy (Centerís acknowledgement of receipt of July 5, 2002).
On July 5, 2002, the Center sent a request for verification of registration to the Registrar. That very date the Registrar answered confirming that it had not received a copy of the complaint, that the domain name in dispute had been registered through the Registrar, and that Respondent is Domain Nameís current registrant .
The Registrar also confirms the applicability of the UDRP to the Domain Name, giving further details of the Registrant.
The Registrar finally states that the domain name will remain locked during the pending administrative proceeding.
Finally, the Registrar confirms that the Respondent has submitted to the jurisdiction of the Province of Ontario, (Canada) pursuant to the registrant agreement.
On July 8, 2002, further to the Acknowledgement of Receipt of Complaint, the Center notified the Complainant the deficiency consisting of the non-submission of the Complaint in electronic format as required by Rules, Paragraph 3(b).
On July 9, 2002, the Complainant sent an email to the Center attaching the amended Complaint as required by the Center in accordance with the Rules, and noting that the Complaint had been amended to correct the omission of the choice of local court under Mutual Jurisdiction. Accordingly, the Complainant agrees to be submitted to the courts where the principal office of the Registrar is located. A copy of this amendment is also sent to the Respondent.
Having verified that the Complaint meets with the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules and the Supplemental Rules for Uniform Domain Names Dispute Resolution Policy (the Rules), on July, 16, 2002, the Center sent to the Respondent a notification under Paragraph 2 (a) of the Rules together with copies of the Complaint.
The Respondent responded the Complaint on August 5, 2002 (by email), and on August 2, 2002 (in hardcopy). On August 5, 2002, the Center notified the Respondent that he had not sent the Response to the Complaint in electronic format.
On August 12, 2002, after receiving his completed and signed Statement of Acceptance and Declaration of Impartiality and Independence, the Center appointed Mr. Jose Carlos Erdozain as the single member of the Administrative Panel (the Panelist). On the same date, the Center notified both the Complainant and the Respondent the appointment of the Panelist.
The date scheduled for the issuance of the Panelís decision is August 26, 2002.
The language of the proceeding is English.
4. Factual Background
The Complainant is the exclusive licensee of some audiovisual contents owned by TV Azteca, S.A. de C.V., a Mexican corporation. Those contents refer to information concerning news, entertainment, sports, audiovisual works and registered trademarks owned by TV Azteca (cfr. Clause One of the Agreement attached as Annex 6 of the Complaint).
The Complainant has failed to prove expressly that it is the exclusive licensee to use the trademark "hechos"; the Complaint does not include the list of trademarks whose use is licensed to the Respondent according to Annex 1 of the Agreement as of February 14, 2000 (cfr. Annex 6 of the Complaint). The Complainant has not attached certificates of the registrations of the trademarks including the word "hechos" in favour of either TV Aztec, or the Complainant, not specifying the territorial scope of the (trademark) right granted.
The Respondent does not contend the existence of the registration of the trademark "hechos", but that such a trademark has been licensed to the Respondent.
The Domain Name is composed of the word "hechos", which means "facts" in the Spanish language.
The Domain Name was registered on May 18, 2002.
TV Azteca broadcasts a program dedicated to investigate reporting, news and opinion. This program is also showed by the Internet through its web site.
The Respondentís business activity consists of registering numerous generic names and to resell or to use them for web sites, and for vanity-type email web sites.
The Respondent selected the Domain Name, based on the word "hechos", because of its high commercial value, representing an important asset in electronic commerce.
The Respondent registers domain names based on generic names in order to allow his customers to match their profession or name.
5. Partiesí Contentions
5.1Complainant contends that:
a)The reference to "complainantís mark" should be taken to refer to both Complainant and its licensor, TV Aztec, S.A. de C.V.
b)The domain name <hechos.com> is identical and therefore confusingly similar to the various trademarks "hechos" which are registered in favour of the licensor of the Complainant.
c)The word "hechos" is a fanciful play on words, suggestive of Complainantís services, but not descriptive, being the mark in question deemed inherently distinctive and entitled to protection without proof of acquired distinctiveness.
d)The risk of confusion is even greater because the Domain Name necessarily refers to services delivered by means of the Internet, making the public believe that the Respondent is sponsored by the Complainant.
e)The Respondent has not any right or legitimate interest in the domain name at issue due to:
i)The Complainant has not given Respondent any right to use the disputed domain name, having registered the Respondent the domain name <domaim.com>, which shows that the Respondent has a business of registering domain names for subsequent resale.
ii)The Respondent has not been known by the domain name, as an individual, business or organisation.
iii)The Respondentís domain name resolves to a place-holder page at the address of the targetsearches.com, which shows that Respondent is not using the Domain Name in any bona fide offering of goods or services.
f)The domain name <hechos.com> has been registered and is being used in bad faith, due to:
i)The fact that Respondent should have had actual notice of Complainantís use of, and rights in, the trademarks at issue.
ii)The fact that Respondent is not using the Domain Name in any bona fide offering of goods or services, nor in any legitimate non-commercial use.
iii)The fact that, having sent to Respondent an email advising him of the Complainantís rights in the "hechos" mark and requesting him to transfer the mark to TV Aztec in exchange for out-of-pocket costs for registration of the Domain Name, the Respondent has not contacted Complainant nor its attorneys in response to this letter.
iv)The fact that, although Respondent has at this time no apparent plans to attract Internet users for financial gain, Complainant is nevertheless damaged by the existence of the Domain Name in Respondentís hands.
v)The fact that the registration of a domain name similar or identical to a highly distinctive mark is evidence of bad faith, because the distinctive nature of the mark reduces or eliminates any claim that the registrantís infringement was innocent.
5.2. Respondent contends that:
a)The expression "trademark or service mark in which the Complainant has rights" entitles the licensee to submit a complaint under the Policy, since the Agreement between the Complainant and the TV Azteca does not contain any statement on that issue.
b)Neither the above-mentioned Agreement, nor the Exhibit 2 of the same, containing the list of trademarks to be licensed to use, have been provided by the Complainant.
c)The mark and the Domain Name are both based on a generic word, "hechos", which means facts, events, in the Spanish language, and that the word is generic and not suggestive of the services of the Complainant, and must be considered a common descriptive word when used in contexts and channels of commerce outside the services provided by the Complainant.
d)The Complainant has not met the onus of proof that the mark "hechos" is deemed inherently distinctive.
e)Being Respondent an Italian citizen, he might not have been aware of the existence of a trademark on the word "hechos", not bringing Complainant any evidence of the reasons why Respondent should have been aware of the mark "hechos", based on a dictionary term.
f)That consumers, who see Respondentís site, are likely to believe that the site has any connection with the Complainant.
g)That the domain name <domaim.com> is available for sale or has been offered to anyone.
h)That his business model is, among others, to register numerous generic names and to resell or to use them for web sites, also for vanity-type email web sites.
i)That the business of registering, even for reselling, generic domain names is a legitimate business activity, having the Respondent a legitimate interest in the contested Domain Name.
j)That the word "hechos" is a short, generic letter combination, and Complainant may not claim exclusive rights therein.
k)That the Complainant has not provided any evidence of facts which might indicate that the Respondent knew or should have known of Complainantís trademarks, and registered the Domain Name with the intent of capitalizing on Complainantís trademark interests or even that Respondent was aware of Complainantís existence when it registered the Domain Name.
l)That the Complainant has not argued, much less provided evidence, that the Respondent registered the Domain Name specifically for the purpose of selling it to the Complainant or to a competitor of the Complainant.
m)That the lack of response to the Complainantís letter cannot be considered as proof of the intention to sell the domain name to the trademark owner.
n)That the Complainant has no filed any evidence that Respondent registered or used the Domain Name to create confusion, nor in order to obtain profit or otherwise abuse of Complainantís trademarks.
6. Discussion and Findings
The Policy sets forth in Paragraph 4 (a) the cumulative elements that the Complainant shall prove in order to succeed in an administrative proceeding for abusive domain name registration. I shall examine each one of these elements in the following items:
4.a.(i) Identity or confusing similarity
First of all, it must be decided whether the expression "Ötrademark or service mark in which the Complainant has rights" embodies also the situations in which the Complainant is not the trademark holder but the licensee. To this effect, it must be stressed that the Policy does not specify whether the Complainant must be owner of the right involved or not. The Policy only requires from the Complainant the proof of the existence of the right which entitles the Complainant to submit the Complaint before Respondent, irrespective of the sort of right at issue, which, accordingly, may consist either of a mere license, or of the ownership or any other right that per se is considered to be sufficient to defend the legal situation in which the Complainant may legitimately be. Apart from the proof of the existence of the right as previously described, it is also possible to demonstrate such a right by means of presumptions from which it can be deduced that the Complainant is entitled to submit the Complaint on the grounds of a third partyís right.
In this case, the Complainant has not attached the list of the trademarks whose use TV Azteca has licensed. Therefore, it is not possible prima facie to determine whether the Complainant is entitled or not to submit the Complaint. However, there are circumstances from which it can be deduced that the Complainant defends a legitimate interest or a (license) right [e.g. the Agreement between the Complainant and TV Azteca of February 14, 2000 (Annex 6 of the Complaint), and the fact that the owner of the trademark right, TV Azteca, establishes a link in its web site to the site of the Complainant, which shows a certain joint venture between them (Annex 4 of the Complaint]. All these circumstances are decisive in my view to consider that the Complaint is sufficiently entitled to submit the Complaint and defend its right to use the mark "hechos" as domain name.
As to the question of identity or confusing similarity with the trademarks of the Complainant, I consider that having the Respondent not brought up the question of the existence and scope of the trademarks at issue for discussion, the Respondent has implicitly accepted that the marks "hechos" have been registered in name of TV Azteca and therefore exist, being valid and in force.
Comparing both the trademarks at issue and the Domain Name, there can be no doubt that the word "hechos" is remarkably the same word used in both cases, with no difference at all.
On the grounds of the above-mentioned premises, it is beyond question that the trademark "hechos", registered by TV Azteca and whose use has been licensed to the Complainant, is identical to the domain name <hechos.com>.
In my view, the question of the generic type of the mark "hechos" should be decided in the light of the discussion of the existence of the rest of requirements set forth under the Policy.
In conclusion, the requirement of Paragraph 4.(a).(i) is met.
4.a.(ii) Absence of respondent rights or legitimate interest in the domain name
The question to be decided is whether Respondent has or has not any right or legitimate interest in the Domain Name.
On the one hand, Complainant contends that it has not given any right to use the disputed domain name, and that Respondentís activity consists of selling unused domain names, not having been known Respondent by the Domain Name as an individual, business, or other organisation. On the other hand, Respondent contends that his activity consists of the registration of generic names, one of which is <hechos.com>. Taking into consideration that the Domain Nameís basic name is a generic one, Respondent considers that Complainant cannot claim exclusive rights therein. Finally, Respondent attaches some letters addressed to an Italian company with which he intends to demonstrate the preparation of the use of the Domain Name.
In my opinion, the question of the existence or absence of rights and legitimate interests in the Domain Name must be reasoned on the grounds of the simplicity or generic character of the mark "hechos" and the legitimacy of a business model consisting of registering generic domain names.
Firstly, it should be taken into consideration that Complainant has not submitted any proof or evidence of the fame or well-known character of the mark "hechos", which has been licensed to him. It is not sufficient with the Complainantís contention of the fact that the trademarks at issue are well-known or notorious to conclude that this requirement has been proved. If this should be the case, then every trademark alleged by any complainant would be automatically considered as well-known or notorious, and this conclusion must not be rationally accepted.
The previous statement is even more valid in cases where the alleged inherent distinctiveness is referred to a mark formed by words of common use or words which in the usual language do not have any per se distinctive meaning. In other words, the more common or usual the words used to form the mark at issue are, the less protection that the interested party may expect to receive in terms of Trademark law, and the more it will be justified that the interested party must bring sufficient proofs or evidences of how the mark at issue has acquired distinctiveness amongst the consumers or interested public to whom it is addressed.
Furthermore, being the fact that this dispute deals with a generic word ("hechos"), it does not seem to me decisive in order to consider the lack of right or legitimate interest of the Respondent or in order to discredit his activity that the Respondentís model business consists of registering domain names from basic or commonly used words. To this effect, I consider that the registration of domain names with basic or commonly used words must not be considered illegitimate per se (see WIPO Case No.D2000-1403, December 20, 2000). As stated in Decisions issued in WIPO Cases No.D2001-1154 (March 4, 2001) or D2001-1500 (March 6, 2001) referred to the use of generic names, the registration of these names is forbidden when it could be deemed abusive or whose use is intended to tease consumers about the origin of the services or goods provided (see also decision of July 12, 2001, of the German Supreme Court in case <mitwohnzentrale.de>).
How extensive the illegitimacy should be considered depends on the distinctiveness of the word in question, which it may have been acquired among the consumers, and the delimitation of the territorial scope of exercise of rights of both Respondentís Domain Name and Complainantís trademarks. To this extent, being Complainant and Respondent citizens of different and very distant countries (and being focused Complainantís main activity in the area of Mexico), there does not seem to be reasons to believe that Respondentís activity may cause a direct damage to Complainantís activity or that its activity is one lack of legitimate interest per se. Precisely, the Complainant has been licensed with national (Mexican) trademarks, which induces to believe that Complainantís main activity is carried out and is deployed in Mexico. It would not be fair and legitimate to intend the extraterritorial enforceability of a trademark that has been granted on a national basis.
Therefore, the requirement of Paragraph 4.(a).(ii) is not met.
4.a.(iii) Respondentís registration and use of the Domain Name in bad faith
The Panel cannot agree with Complainantís contention that the lack of Respondentís response to Complainantís email of June 26, 2002, must be automatically interpreted as confirmation of Respondentís intention of selling the Domain Name for a sum in excess of out-of-pocket costs. Should this be necessarily the case, it would be sufficient to any complainant just to send a similar email to the respondent in order to make evident the bad faith of the latter in registering and using the disputed domain name. This assertion is unacceptable. On the contrary, the Policy requires the submission of evidences proving that the Respondent has acquired the domain name primarily with the purpose of selling it, renting it or transferring it to the Complainant. To this extent, no such an evidence or proof has been submitted by Complainant. Respondentís silence cannot be taken into consideration as evidence of his intention of making business unfairly with the Domain Name. Bad faith cannot be assumed and must be proved.
Complainant also contends that Respondent should have had actual notice of Complainantís use of, and rights in, the trademarks whose use has been licensed to him. Again, in my opinion, no proof or evidence has been submitted that the trademarks or Complainantís activity is notorious or well-known outside Mexico, or at least for the Respondent who lives, it must be reminded, in Italy.
Likewise, I agree with Respondentís contentions that the use of generic names with obvious generic meanings cannot be interpreted as use or registration of domain names in bad faith (WIPO Case No.D2001-0545, July 23, 2001).
Finally, Complainant contends that Respondentís use of the Domain Name causes him a damage, since Complainantís customers unsure about such a name would guess that it was also the companyís name or the name of a service of the company. But again, assuming that this dispute deals with a generic domain name and that the notorious or well-known character world wide of the trademarks at issue has not been proved, it cannot be sustained that Respondentís real attitude was that of causing confusion among Complainantís customers.
Therefore, the requirement of Paragraph 4.(a).(iii) is not met.
The Complainant has proved that the domain name is identical to some trademarks, whose use has been licensed to him. Nevertheless, the Complainant has not proved the lack of Respondentís rights or legitimate interest in the domain name at issue, and the Respondentís bad faith in the registration and actual use of the Domain Name. Therefore, according to Paragraphs 4.(i) of the Policy and 15 of the Rules, the Panel dismisses the Complaint.
Jose Carlos Erdozain
Dated: August 26, 2002