WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Grupo Televisa, S.A. v. Party Night Inc., a/k/a Peter Carrington
Case No. D2003-0228
1. The Parties
The Complainant is Grupo Televisa, S.A., Zedec Santa Fé, Delegación Alvaro Obregón, México, D.F. 01210, of Mexico, represented by Leventhal, Senter and Lerman, PLLC of United States of America.
The Respondent is Party Night Inc., a/k/a Peter Carrington, Amsterdam, Netherlands.
2. The Domain Names and Registrar
The disputed domain names <esmasmusica.com> and <telvisa.com> are registered with Key-Systems GmbH dba domaindiscount24.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 21, 2003. On March 24, 2003, the Center transmitted by email to Key-Systems GmbH dba domaindiscount24.com a request for registrar verification in connection with the Domain Names at issue. On March 26, 2003, Key-Systems GmbH dba domaindiscount24.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, Paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 31, 2003. In accordance with the Rules, Paragraph 5(a), the due date for Response was April 20, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on April 30, 2003.
The Center appointed Brigitte Joppich as the sole panelist in this matter on May 9, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, Paragraph 7.
4. Factual Background
The Complainant is an international media and entertainment company incorporated in Mexico since 1972. The Complainant is the largest media company in the Spanish-speaking world and a dominant figure in the international entertainment business. The Complainant produces the most Spanish-language television programs (50,000 hours in 2001) and is believed to own the largest library of Spanish-language television programming in the world. The Complainant also engages in other businesses, including radio production and broadcasting, professional sports and show business promotions, paging services, feature film production and distribution, dubbing, and a major Spanish-language Internet portal, EsMas.com. In 2001, Complainant's net sales totaled over 2 billion U.S. dollars.
The Complainant has registered several service marks for TELEVISA and TELEVISA & Design (the "TELEVISA marks") in sixty-one countries worldwide, primarily in International Classes 38 and 41, there under several marks in important countries as Australia, Germany, the UK, the US, and Community Trademarks in the European Community. The first usage of the trade mark TELEVISA was on January 31, 1973; the first use in commerce occurred no later than August 31, 1976.
Complainant has further registered several service marks for ESMAS and ESMAS & Design (the "ESMAS marks") in sixty countries worldwide, primarily in International Classes 35, 38 and 42, there under also several registrations in the above mentioned important countries. The first usage of the trade mark ESMAS was on April 16, 2000; the first use in commerce occurred no later than May 31, 2000. The ESMAS marks are used in conjunction with music-related services.
The Respondent has not provided the Panel with any information about his business or his person. The Respondent has registered the Domain Names <telvisa.com> and <esmasmusica.com> on November 24, 2002, and November 17, 2002, respectively.
5. Partiesí Contentions
The Complainant contends that each of the three elements specified in Paragraph 4(a) of the Policy are given in the present case, i.e.
(i) the Domain Names are identical or confusingly similar to the TELEVISA and ESMAS marks;
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names:
- the Respondent is not a licensee of the Complainant, the Domain Names can neither be derived from the Respondentís personal name nor the name or the nature of the business operated by him and the Respondent is not commonly known by either of the Domain Names;
- the Respondent has furthermore no rights to or legitimate interests in the Domain Names as the registration of a Domain Name is not, by itself, sufficient to establish such rights or interests;
- the Domain Names were not used in connection with a bona fide offering of goods and services nor in any legitimate non-commercial or fair content as the Respondent's practices include linking to pornographic websites, thus tarnishing the Complainant's service marks;
(iii) the Domain Names were registered and being used by the Respondent in bad faith:
- the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant's marks;
- concerning the domain <telvisa.com>, the Respondent has shown the behavior of typo squatting by registering a simply misspelled version of the Complainant's TELEVISA marks;
- bad faith is also displayed by the Respondent's usage of the disputed Domain Names linked to pornographic and gambling websites thus tarnishing the Complainant's marks and attempting to profit from the illegitimate relationship;
- the Respondent has further registered the disputed Domain Names in at least constructive knowledge of the Complainant's famous TELEVISA and ESMAS marks;
- the Respondent engaged in a pattern of abusive domain name registration, he has lost at least 29 complaints under the Policy.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
Under Paragraph 4(a) of the Policy the Complainant must prove that each of the following three elements are present:
(i) the Domain Names are identical or confusingly similar to the Complainantís service marks;
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant owns rights in the TELEVISA and ESMAS marks which have not been denied by the Respondent.
The domain name <telvisa> under the TLD <.com> differs from the Complainant's TELEVISA marks merely by the omission of the second letter "e" as the TLD is of no consequence for establishing the identity or confusing similarity between the Domain Name and the Complainant's service marks. The Panel finds these words to be confusingly similar in respect of their visual and phonetic attributes. Furthermore, the overall impression of the Complainantís TELEVISA marks is not significantly changed by the omission of the second letter "e". Therefore, Respondent's domain name <telvisa.com> is confusingly similar to Complainant's TELEVISA marks.
As to <esmasmusica.com> the TLD can again be left aside. The name "esmasmusica" fully incorporates the distinctive part of the Complainant's ESMAS marks and merely adds the descriptive term "musica" (Spanish for "music"). Domain names created by using a third party's trade mark and merely adding a generic word or term are in most cases confusingly similar. The fact, that the Complainant is engaged in radio production and broadcasting in Spanish language and uses the ESMAS marks in conjunction with music-related services only confirms this rule. The domain name <esmasmusica.com> is therefore confusingly similar to the Complainant's ESMAS marks.
The Complainant has satisfied the requirements of Paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if proved by the Respondent, shall demonstrate his rights to or legitimate interests in the Domain Names for purposes of Paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the Respondent of the dispute, the use by the Respondent of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organization) has been commonly known by the Domain Names, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert customers or to tarnish the service marks at issue.
The Domain Names can neither be derived from the Respondentís personal name nor the name or the nature of the business operated by him, nor is the Respondent commonly known by either of the Domain Names, which were not used in connection with a bona fide offering of goods and services nor in any legitimate non-commercial or fair content. The Panel therefore sees no rights of the Respondent to or legitimate interests in the Domain Names and finds that the Complainant has also satisfied the requirements of Paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which for purposes of Paragraph 4(a)(iii) of the Policy shall be evidence of the registration and use of the Domain Name in bad faith, including
(ii) where the Respondent has registered the Domain Name in order to prevent the Complainant as owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) where the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) where, by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his 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 his web site or location or of a product or service on his web site or location.
The Respondent registered both of the Domain Names in 2002, i.e. at a time when the Complainant enjoyed rights in the TELEVISA and ESMA marks in numerous territories, including the Netherlands, the alleged residence of the Respondent. The mere fact of the registration of two domain names within one week, which are confusingly similar to the Complainant's TELEVISA and ESMAS marks respectively, is sufficient evidence that he knew of third party's rights in these marks. Taking into account the pattern of abusive domain name registration the Respondent has engaged in the past, the Panel finds that the Domains Names were registered in bad faith.
Furthermore, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its pornographic websites, by linking them to the misleading Domain Names, thus creating confusion and tarnishing the Complainant's goodwill in its service marks. The Panel finds that this constitutes bad faith usage of the Domain Names.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <telvisa.com> and <esmasmusica.com> be transferred to the Complainant.
Dated: May 21, 2003