WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Casa Editorial El Tiempo S.A. v. RevistaMotor.com Inc
Case No. D2003-0324
1. The Parties
The Complainant is Casa Editorial El Tiempo S.A., Bogotá, Colombia, represented by Triana, Uribe & Michelsen of Colombia.
The Respondent is RevistaMotor.com Inc, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <revistamotor.com> (the "Domain Name") is registered with GKG.NET, INC (formerly GK Group LLC) ("the Registrar").
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 25, 2003.
3.2 On April 29, 2003, the Center transmitted by email to GKG.NET, INC (formerly GK Group LLC) a request for registrar verification in connection with the domain name at issue. The Registrar did not send the required verification, even though a reminder was sent to them. Due to the lack of reply from the Registrar, the Center proceeded with the case using the information provided on the corresponding Registrars Whois page.
3.3 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").
3.4 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 May 2, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was May 22, 2003.
3.5 The Response was filed with the Center on May 12, 2003.
3.6 A supplemental filing was filed by Respondent on May 17, 2003.
3.7 On June 4, 2003, 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"), in compliance with the Rules, paragraph 7, the Center notified the parties of the appointment of a single-member panel consisting of the Sole Panelist.
4. Factual Background
The following facts are undisputed:
4.1 Complainant, CASA EDITORIAL EL TIEMPO S.A., is a corporation organized and existent under the laws of the Republic of Colombia, and with its principal place of business in the city of Bogotá, D.C., Republic of Colombia, incorporated by Public deed N° 353 dated February 1, 1956, registered before the Chamber of Commerce of Bogotá, on February 4, 1956, under the form of a limited liability company, and under the form of a corporation on May 29, 1997.
4.2 The Complainant is devoted principally to the publication and printing of newspapers, magazines, brochures and books.
4.3 Among Complainant’s products, it is a publication named "MOTOR" (the "Publication"), distributed with EL TIEMPO newspaper. Respondent has expressly acknowledged the activities performed by Compliant, and the existence of the Publication.
4.4 The Publication specializes in information related with the automobile sector, covering several subjects related with the automobile business, including information concerning new cars in the market, car accessories, reports on the Formula One World Championship, and a permanent section which publishes the prices of new and used cars, both national and imported.
4.5 EL TIEMPO newspaper is distributed all over the Colombian territory, and abroad, specially in the cities of Miami and New York, in the United States of America.
4.6 The Publication was first released on November 28, 1981, and has been published for more than 21 years, surpassing the 350 bi-weekly issues.
4.7 The Publication is well known and widely read in Colombia.
4.8 The Complainant has registered a trademark consisting in the word "MOTOR" (the "Trademark") in Colombia to cover products of International Class 16 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks. The registration was issued on June 20, 1984.
4.9 International Class 16 of the Nice Agreement covers trademarks identifying "Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks". Magazines, periodicals, newspapers, newsletters and printed publications are included in this class.
4.10 Complainant also publishes the Publication in the Internet, through the website "www.motor.com.co". As a service of its web page, the Complainant features classified announcements, where the users can place their offers to sell or buy cars.
4.11 Respondent registered the Domain Name on October 1, 2002.
4.12 On October 22, 2002, the Complainant received a request for a classified advertisement to be published in the Publication online version, its website "www.motor.com.co", specifically in the classifieds section, sent by Mr. Raul Gallon. The request, entered online through the mentioned website, was made by Mr. Raul Gallon, Respondent’s legal representative, domiciled in Florida, United States of America. The advertisement requested for publication by Mr. Gallon had the following text in Spanish language, which translation follows:
FREE Classified ads, for the Sale, Buy or Barter of your Car Completely Free in the Internet"
5. Parties’ Contentions
5.1.1 Complainant contends that the Domain Name is confusingly similar, to the point of being misleading, with the Trademark..
5.1.2 The addition of the word "REVISTA" in Spanish language, which in English language means "magazine", is not enough to differentiate the Domain Name from the Trademark identifying the Publication. The fact that the product identified by the Trademark is precisely a magazine or a "revista", the use of such word in connection with the Trademark increases the similarity and likelihood of confusion between the Domain Name and the Trademark.
5.1.3 Complainant further contends that Respondent lacks rights or legitimate interests in connection with the Domain Name, as it registered the Domain Name being aware of the existence of the Trademark, and only with the purpose of unlawfully divert consumers to its website and create confusion among the public with the Publication.
5.1.4 Complainant contends that Respondent registered and uses the Domain Name at issue for an offering of goods and services for commercial gain that can not be considered as a bona fide offering; since Respondent uses the Domain Name to offer services in connection with the automotive business, directed to the Colombian public. According to Complainant, the main page of Respondent’s website on "www.revistamotor.com" (the "Website"), welcomes its users with the a message in the Spanish language which translation would read:
"Welcome to RevistaMotor.com. The free automotive photo- classifier in Colombia. Here you will find news, screensavers, list of the main dealers, concessionaries, automotive service providers, parts, and much more"
5.1.5 According to Complainant, the content of the disputed Domain Name web page is addressed to the Colombian public, and offers services relevant to the Colombian audience, which are closely similar to the ones offered by the Publication. Moreover, Complainant contends that Respondent was fully aware of the existence of the Publication and registered the Domain Name solely for the purpose of misappropriating the goodwill of the Trademark and Publication. Respondent deliberately decided to register and use the Domain Name in connection with an offering of goods and services directly addressed to the same target of the Publication (the Colombian users), and in connection with the same subject (the automobile business). The fact that the Respondent contacted Complainant to request for a classified advertisement to be published in the online version of the Publication, only 21 days after Respondent registered the Domain Name, is -in Complainants opinion- further evidence that it knew of the existence of the Publication.
5.1.6 Complainant contends that the Domain Name was registered and is being used in bad faith, since Respondent registered it with the intentional purpose of attracting, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Trademark as to the source, sponsorship, affiliation, or endorsement of its website.
5.1.7 Based on these assertions, Complainant requests for the Domain Name to be transferred to it.
5.2.1 Respondent in its response implies (although not states clearly) that a difference should be made between a "pullout" which is how it identifies the Publication and a "magazine.
5.2.2 Respondent also argues that there is no relation, "in content of substance" between the Publication and the Website.
5.2.3 Respondent contends that, if Complainant is attempting to argue that there is a similarity between the Trademark and the Domain Name; there are many other names that are more similar to the Trademark, and many that include the word "motor", since it has many meanings both in English and Spanish.
5.2.4 Respondent also argues that the Trademark is a generic term, which cannot function as a mark; therefore should not be entitled to trademark protection.
5.2.5 Respondent further states that Complainant has had the Publication "in excess of many years, and during all that time it had every opportunity to register the domain name, but failed to do so".
5.2.6 The Respondent also states that the Domain Name is a Generic Top Level Domain (.com), that it has a business in the United States, and that its intentions are in good faith and should not harm any company.
5.2.7 That the Website is directed primarily to the Latin America market and secondly to all parts of the world.
5.2.8 That the Website in its legal notice states that it is not affiliated neither belongs to any editorial house or magazine, but that it is a private business in the US; therefore there is no doubt that it has no intention to misdirect or confuse anyone.
5.2.9 The Supplemental Filing of May 17, 2003, does not include new or different statements or defenses; therefore it is unnecessary to consider its content in these proceedings.
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 the Domain Name nor the manner in which it may intend to use it will directly or indirectly infringe the legal rights of a third party, and that in order to resolve a dispute under the Policy, the Respondent’s 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 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 Sole Panel as to the principles that it has 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 rights or legitimate interests with respect to the domain name; and
(3) that the domain name has been registered and used in bad faith
The Sole Panelist will analyze each of these, as provided by the Policy.
6.8 Identity or Confusing Similarity
6.8.1 Complainant has evidenced that it has used the word "motor" to identify the Publication, as early as 1981; having registered the Trademark on June 20, 1984. Moreover, Complainant has produce evidence that the Trademark was renewed on January of 1995. Complainant contends that the Domain Name is identical with and confusingly similar to the Trademark pursuant to Policy paragraph 4(a)(i), and that Respondent has only included the generic descriptive word "revista" which only makes reference to the actual products identified by the Trademark.
6.8.2 Respondent has acknowledged the existence of the Trademark but argues that it should not be entitled to trademark protection since it is a generic term. To support his argument, it cites various cases, mostly from US trademark law, dealing with generic terms.
6.8.3 The Sole Panelist is not persuaded by Respondent arguments. Although it could be argued that the word "motor" is generic to automobiles, it is neither generic, nor descriptive for publications, which are the product protected and identified by the Trademark.
6.8.4 Furthermore, even if it were to be considered as a generic term with respect to automobiles, it should be stated that Paragraph 4(a)(i) of the Policy is unambiguous when stating that the domain name has to be identical or similar to a trademark over which the complainant has rights. Therefore, if the Complainant proves, as it has in the present case, that it owns a valid trademark, the Panel should refrain from questioning whether the granting of such trademark was correct or not. Such actions must be exercised before the authority that granted it as a trademark. If the Respondent considers that the Trademark was granted erroneously or that it should not be considered as such, it should challenge it directly –in the present case– before the Colombian authorities.
6.8.5 The Sole Panelist considers irrelevant the distinction that the Respondent implies with respect to a "magazine" and a "pullout". Both in English and in Spanish, the word magazine refers to a "periodical publication dealing with issues of one or various topics" and/or to "a periodical containing miscellaneous pieces, or a similar section of a newspaper". Based on the information provided by Complainant, and not contested by Respondent, it is this Sole Panelist’s opinion that the Publication fits in these definitions irrespectively of how it is referred to.
6.8.6 Now it is necessary to determine whether the use of the word "revista" together with the Trademark in the Domain Names is distinctive enough to avoid any confusion between the two. Specially considering that the Domain Name comprises the whole Trademark.
6.8.7 The above analysis has been performed by many panelists before this one, to a point where it is possible to almost ascertain as a guiding principle, that the inclusion of descriptive prefixes or suffixes, as well as the top level or country code level domain name extension, does not differentiate a domain name from a trademark that includes it entirely. Moreover, it is the opinion of the Sole Panelist that the inclusion in the Domain Name of a word that identifies the products actually covered by the Trademark, increases the likelihood of confusion between the Trademark and the Domain Name.
6.8.8 Therefore, the Sole Panelist finds that the Domain Name is confusingly similar to the Trademark, pursuant to the Policy, paragraph 4(a)(i).
6.9 Rights or Legitimate Interest.
6.9.1 Complainant contend that Respondent has no rights or legitimate interest in the Domain Names.
6.9.2 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.
6.9.3 Although the Policy, and paragraph 4(a), clearly state 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.
6.9.4 With respect to paragraph 4(c)(i) Complainant has contested that Respondent is not using the domain name in connection with a bona fide (i.e., good faith) offering of goods or services. It is clear that the burden of this section rests in demonstrating the good faith of Respondent with respect to the Domain Name. As previous panels have concluded, the fact that paragraph 4(c)(i) of the Policy refers to bona fide offerings, occasionally leads to the evaluation of common factors among paragraphs 4(c) and 4(b) which refer to bad faith.
6.9.5 Although Respondent has not filed any evidence that may show that it was using the Domain Name before the notice of the dispute, from the fact that Respondent sent to Complainant the request for a classified add before the beginning of these proceedings, it may be inferred that it was already using it. The question to answer then, is if such use was in fact a use in good faith. In order to determine this, it is necessary to find out whether the Respondent can validly argue that its offering of services was a bona fide one.
6.9.6 "Bona fide" is defined by Black’s Legal Dictionary, as "In or with good faith; honestly, openly, and sincerely; without deceit or fraud… Truly; actually; without simulation or pretense."
6.9.7 In accordance with Registrant Whois database, Respondent registered the Domain Name on October 1, 2002. On October 22, 2002, 21 days after the creation of the Domain Name, Respondent contacted Complainant requesting for an advertisement in the online version of the Publication. This fact is significant, since it suggests that Respondent knew, before registration, about the existence of the Trademark and Publication, and its online version.
6.9.8 In its response, Respondent has acknowledged that Complainant "…has had this section [the Publication] for in excess of many years, using the Motor name…" which further indicates that it was aware of the existence of the Publication and the Trademark.
6.9.10 Previous knowledge of the existence of the Publication and the Trademark is relevant. If, as many panels have concluded, Respondent went ahead and registered the Domain Name, notwithstanding that prior knowledge, such conduct may add up to indicate lack of good faith. However, mere knowledge of a trademark does not, by itself, constitute bad faith.
6.9.11 In the present case, although it could be argued that since Respondent’s domicile is in the US, it could have not been aware of the existence of the Publication in Colombia, the Sole Panelist finds elements to conclude that, regardless of its domicile, Respondent is significantly connected with the Colombian market.
6.9.12 Complainant contends that the Website is directed to the Colombian public. To support such affirmation, it produced printout of it as it was on April 11, 2003. The message in the first screen of the Website made clear reference to this fact.
6.9.13 Respondent does not challenge the authenticity of the printouts submitted by Complainant, but includes a different set of printouts, where the welcoming message makes reference to "The free automotive photo- classifier in Spanish speaking countries". Additionally, it includes a printout of its current legal notice, where it states that the website has no affiliation to any editorial house or magazine.
6.9.14 Although the fact that the content of a Website can be modified in a matter of minutes, it is difficult to determine which of these different set of printouts should be taken into consideration in order to conclude if the website was or not directed to the Colombian market.
6.9.15 In order to gather additional information, and based on Paragraph 10(a) of the Supplemental Rules, the Sole Panelist visited the Website. From such visit, the Sole Panelist found that in fact the Website is closely related with the Colombian market. In the different sections of the Website, namely "used cars", "new cars", "services" and "products", the Sole Panelist only found information and advertisements of Colombian based companies and persons domiciled in Colombia; and not from any other Spanish speaking country. Moreover in the section "Seguro Obligatorio" (compulsory insurance) the information refers exclusively to a insurance named "SOAT" which –from the Website content– appears to be a compulsory insurance policy required by the Colombian authorities to all cars within the Colombian territory.
6.9.16 The Sole Panelist also visited the website of the designer and developer of the Website a company named "Solutionsdesigns.com", and found that it is a company based in Florida US, but with strong links to Colombia; whose General Manager is Mr. Raul Gallon, legal representative of Respondent. In addition, we found, among such company’s clients, the website "www.raulgallon.com", by which we learn that Mr. Gallon is a lawyer from Colombian origin.
6.9.17 All these elements lead us to conclude that (i) Respondent was fully aware of the existence of the Publication and the Trademark, (ii) the Website is (or at the very least was before the commencing of these proceedings) specifically directed to the Colombian market, and that (iii) Respondent chose the Domain Name, by reason of the recognition of the Publication and the Trademark in Colombia, hoping to misleadingly divert consumers from the Complainant’s website, for its benefit and commercial gain, consequently not acting "honestly, openly, and sincerely; without deceit or fraud". Accordingly, such conduct, in the opinion of the Sole Panelist, cannot be considered a bona fide offering of goods, as provide in paragraph 4(c)(i) of the Policy.
6.9.18 As with respect to paragraph 4(c)(ii) of the Policy, Respondent has produced, as Annex D of its response, what claims to be the Articles of Incorporation of RevistaMotor.com Inc.
6.9.19 Paragraph 10(d) of the Supplemental Rules, gives to the Panel the power to determine the admissibility, relevance, materiality and weight of the submitted evidence. It is the opinion of the Sole Panelist that the document submitted by Respondent fails to establish that it was commonly known by the Domain Name before the commencement of the proceedings; since such document is not a certificate of good standing that could demonstrate the existence of Respondent’s company, it does not include any type of notarial seal, not even a date of its incorporation. As a result, Respondent has not demonstrated any rights over the Domain Name, under paragraph 4(c)(ii) of the Policy.
6.9.20 Finally, dealing with paragraph 4(c)(iii) of the Policy, the Sole Panelist concludes that, despite Respondent repeated claims that the Website is free; its purpose at least partially, is to obtain commercial gains by means of selling commercial advertisements (banners). This becomes apparent when visiting the Website and "clicking" any of the banners or the Service entitled "Paute con nosotros" whereby a new window opens, with a message which in English would read:
Thanks for your interest in RevistaMotor.com.
If you want to buy publicity in RevistaMotor.com, please fill up the following form. One of our representatives will contact you as soon as possible.
6.9.21 Therefore, the Sole Panelist concludes that the use of the Domain Name by Respondent is aimed to obtain a commercial gain, while diverting consumers from the online version of the Publication.
6.9.22 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).
6.10 Bad Faith
6.10.1 Complainant contends that Respondent registered and is using the Domain Name in bad faith, in violation of the Policy, paragraph 4(a)(iii).
6.10.2 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 website 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 website or location or of a product.
6.10.3 It is the opinion of the Sole Panelist that Complainant has not presented any relevant evidence to substantiate any of the circumstances provided by in sections (i), (ii) or (iii) of paragraph 4(b) of the Policy.
6.10.4 In contrast, the Sole Panelist believes that Respondent’s bad faith has been clearly evidenced in the present case, as has been discussed in the previous section, in dealing with the lack of bona fide services in Respondent’s activities. Registration by respondent of the Domain Name, choosing to use the Trademark (a well known mark in Colombia) prefixed by the word "revista", which describes the kind of goods identified by the Trademark, and creating the Website, aimed to the Colombian public, where publicity in the form of banners is being offered; clearly indicate Respondent’s intention to misappropriate and benefit from the goodwill of the Trademark, in order to attract Internet user to the Website, for commercial gain.
6.10.5 It is the Sole Panelist’s opinion that Respondent’s behavior denotes bad faith under the Policy paragraph 4(b)(iv). Therefore, the Sole Panelist finds that the Domain Name was registered and used in bad faith, pursuant to the Policy, paragraph 4(a)(iii).
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 name <revistamotor.com> be transferred to the Complainant.
Sergio Rodríguez Castillo
Date: June 18, 2003