WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Grupo Televisa, S.A., Televisa S.A. de C.V., Comercio Mas, S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v. Registrant info@ fashionid.com 9876543210
Case No. D2003-0735
1. The Parties
The Complainant is Grupo Televisa, S.A.; Televisa, S.A de C.V; Comercio Más, S.A. de C.V.; Estrategia Televisa, S.A. de C.V. of Mexico; and Videoserpel, Ltd. of Switzerland; represented by Leventhal, Senter and Lerman, PLLC, United States of America.
The Respondent is described as Registrant firstname.lastname@example.org 9876543210, of Yemen, British Virgin Islands.
2. The Domain Name and Registrar
The disputed domain name <televisaespectaculos.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 17, 2003. On September 19, 2003, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain name at issue. On September 22, 2003, OnlineNic, Inc. d/b/a China-Channel.com transmitted by email to the Center its verification response confirming that the Uniform Domain Name Dispute Resolution Policy applies, and that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Registrar informed the Center that the Respondent has not submitted in its Registration Agreement to the jurisdiction of the location of the principal office of the Registrar.
In light of the Registrarís response with respect to the mutual jurisdiction rule, the Center notified the Complainant was administratively deficient, and requested the Complainant to cure the deficiency by submitting an Amendment to the Complaint with an alternative mutual jurisdiction rule. The Complainant filed a Request for Reconsideration and Amendment to the Complaint on September 29, 2003. In its Request for Reconsideration, the Complainant maintained the view that the principal office of the Registrar is in California, United States, and that pursuant to the Registrar Agreement available on the Registrarís website, the Respondent submitted to the mutual jurisdiction of the courts in California. In the alternative, if the Panel finds that the Respondent has not submitted to the jurisdiction of the courts of the principal place of the Registrar, the Complainant filed an amendment to its claim and submitted to the jurisdiction of the courts at the location of the Respondentís address in Yemen, Virgin Islands, and the United Kingdom.
The Center verified that the Complaint, together with the amendment to the Complaint, save for the choice of mutual jurisdiction, 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 October 21, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was November 10, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on November 12, 2003.
The Center appointed Daniel J. Gervais as the sole panelist in this matter on November 25, 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. Complainant is the largest media company in the Spanish-speaking world and a dominant figure in the international entertainment, media and publishing business: the Complainant produces Spanish-language television programs, which are distributed through its cable and satellite systems, and are also licensed to other broadcasters throughout the world; the Complainant is a publisher and an international distributor of Spanish-language magazines; and it 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. The Complainant operates maintains websites at several domain names, including <esmasespectaculo.com>, <esmasespectaculo.net>, <esmasespectaculos.com> and <esmas.com>.
The Complainant sent a cease and desist letter via email and courier to the Respondent, requesting the transfer of the disputed domain name from the Respondent in a letter of May 27, 2003. The Respondent did not respond to the email communication and the letter sent by courier was returned as undeliverable. The Complainant sent a follow-up letter via email to the Respondent on June 10, 2003, and has not received any response to it.
5. Partiesí Contentions
The Complainantís arguments are focused on both the procedural and substantive aspects of the claim.
1. Procedural Aspects of the Claim
The Registrar informed the Center that the Respondent has not submitted in its Registration Agreement to the mutual jurisdiction of the location of the principal office of the Registrar. The Complainant asserts that:
a. Based on the text of the Registration Agreement available on the Registrarís website, "www.onlinenic.com/english/agreements/serviceterms.html", the Respondent submitted to the jurisdiction of the courts of California, or the U.S. County Court for Almeida County; and
b. The Principal office of the Registrar is in California, United States of America.
The Complainant therefore chose courts at the location of the principal place of the registrar, which is, according to the Complainant, California, as the mutual jurisdiction in the present dispute.
The Complainant requests the Panel to determine that the principal office of the Registrar is located in California and that the initial choice of mutual jurisdiction is valid. The Complainant states that the Panel has jurisdiction and power to make such a decision. In the alternative, if the Panel does not make such a decision, the Complainant submits the Amendment to the Claim, in which he submits to the jurisdictions of the courts at the location of the Respondentís address, which is indicated as Yemen, British Virgin Islands.
2. Substantive Aspect of the Claim
The Respondent registered and is using a domain name that is confusingly similar to Complainant's trade name and marks. According to the information in WHOIS database, the Respondent registered domain name <televisaespectaculos.com> on or about December 16, 2002. According to the Complainant, the Respondent is using the disputed domain to provide links to various commercial and pornographic websites, as well as the service "Top TEN Search Engines in the world".
The Complainantís marks are well known marks, and have been used by the Complainant in connection with its media and entertainment businesses. The first use of the Complainant mark TELEVISA occurred in 1973, and the mark has been used in commerce since 1976. TELEVISA ESPECTALUSOS is a section of the Complainantís news division, and has been used by the Complainant in connection with its entertainment related services.
The Respondent could not have been unaware of the Complainantís long-standing rights in its marks, which is known and recognized internationally. The Complainant marks have been registered in 62 countries, including Mexico, United States, and United Kingdom. The disputed domain name is confusingly similar to the Complainantís marks and has been used by the Respondent in bad faith.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
A. Procedural Aspect - Mutual Jurisdiction rule
The Panel must discuss first the issue of Mutual Jurisdiction in the Amended Complaint.
In its Complaint submitted on September 17, 2003, the Complainant submitted to the jurisdiction of the courts of the principle place of the Registrar. In its letter of September 22, 2003, the Registrar informed the Center that in its Registration Agreement the Respondent did not submit to the jurisdiction of the courts of the principle place of the Registrar.
The Complainant believes that the Respondent submitted to the courts of the principal place of the Registrar, and that the principal place of the Registrar is California. The Complainant based its claims on a copy of the Registration Agreement available on the Registrarís website, press release from the Registrar, and a list of ICANN accredited Registrars, all of which provides that the Registrar is located in the United States. The Complainant required the Panel to reconsider the decision by the Center to request Amendment to the Complaint, and make a decision that the choice of the jurisdiction of the courts of the principal place of the Registrar is valid. In the alternative, if the Panel permits the amendment to the Complaint, the Complainant submits to the jurisdiction of the location of the Registrantís address.
Paragraph 1 and 3 (b)(xiii) of the Rules state that the Complaint must specify an express choice of one (or both) of the two Mutual Jurisdiction options, i.e. the courts at the location of the principal office of the registrar (provided the domain name holder has submitted in its registration agreement to that jurisdiction for court adjudication of disputes concerning or arising from the use of the domain name) and/or the domain name holder's address as shown for the registration of the domain name in Registrar's WHOIS database at the time the complaint is submitted to the Provider.
The purpose of the Policy is to provide rules for the resolution of disputes between the Registrant and a third party. (See paragraph 1 of the Policy). The Policy does not regulate the relationship between the Registrar and the Registrant. This Panel has neither the power nor the jurisdiction to decide on the validity and the scope of the agreement between the Registrar and the Respondent. As indicated in another similar case: "The information about OnlineNIC, Inc.ís principal place of business and whether or not the Respondent had submitted in his or her registration agreement to the jurisdiction of the courts in that place is information which is peculiarly in the possession of OnlineNIC, Inc. and the Respondent. It is not something that the Complainant could reasonably be expected to know." (See Wal-Mart Stores, Inc. v. Su Rong Ye, WIPO Case No. D2002-0771, See also UBS PaineWebber Inc. v. email@example.com 9876543210, WIPO Case No. D2003-0349). The Panel also does not have the power or the jurisdiction to declare an office of the Registrar to be the principal office for the purposes of this proceeding.
The Registrar did not inform the Center of its principal place of business. The Complainant submits that the Registrarís principle place of business is in California. The communication from the Registrar only indicated that the Registrant did not submit to the jurisdiction of the courts of the principal place of the Registrar. The evidence presented by the Complainant as to the mutual jurisdiction of the principal place of the Registrarís was not sufficient to establish that in the Registration Agreement the Respondent submitted to the jurisdiction of the principal place of the Registrar, nor was it sufficient to establish that the principal place of the Respondent is in California. Based on the above, the Center was thus reasonably justified in requiring the amendment to the Complaint. The Panel, therefore, allows the Amendment to the Complaint, and recognizes that the Complainant is subject to the jurisdiction of the location of the Respondentís address, which is Yemen, British Virgin Islands. Whether courts in other jurisdictions are competent in the event of a dispute is not a matter that this Panel can decide.
The Panel, however, reiterates the words of the panelist in UBS PaineWebber Inc. v. firstname.lastname@example.org 9876543210 (See WIPO Case No. D2003-0349): "the possible lack of a requirement by ICANN that registrars publicly identify their principal office for the purposes of Rule 3(b)(xiii). This would enable Complainants to make an informed choice when submitting to a Mutual Jurisdiction. The Panel notes that this is an issue for the attention of ICANN."
B. Substance of the Complaint
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements is satisfied:
1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section 6.B.1);
2. The Respondent has no rights or legitimate interests in respect of the domain name (see below, section 6.B.2); and
3. The domain name has been registered and is being used in bad faith (see below, section 6.B.3.).
Paragraph 4(a) of the Policy clearly states that the burden of proving that all these elements are present lies with the Complainant.
Pursuant to paragraph 15(a) of the Rules, the Panel shall decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom, as it considers appropriate.
1. Is the domain name Identical or Confusingly Similar to a Trademark in which Complainant has Rights?
This question raises two issues: (1) does the Complainant have rights in a trademark; and (2) is the domain name identical or confusingly similar to such trademark or service mark.
As to the first question, the wording of the paragraph 4(a) (i) to "trademark or service mark" has been interpreted by numerous Panels in the past to include both registered marks and the common law marks. See inter alia The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; United Artists Theatre Circuit, Inc. v. Domains for Sale Inc. WIPO Case No. D2002-0005, The Professional Golfersí Association of America v. Golf Fitness Inc., a/k/a Golf Fitness Association, WIPO Case No. D2001-0218; Brooklyn Institute of Arts and Sciences v Fantastic Sites, Inc. National Arbitration Forum No.: FA0009000095560. With respect to the latter, the Complaint must show that the mark has been in continuous use (See United Artists Theatre Circuit, Inc. v. Domains for Sale Inc, already cited; Keppel TatLee Bank Limited v. Lars Taylor, WIPO Case No. D2001-0168) and that the mark achieved secondary meaning ("distinctive character") in association with the Complainant. (See Australian Trade Commission v. Matthew Reader, WIPO Case No. D2002-0786; (1) Galatasaray Spor Kulubu Dernegi (2) Galatasaray Pazarlama A.S. (3) Galatasaray Sportif Sinai Ve Ticari Yatirimlar A.S. v. Maksimum Iletisim A.S., WIPO Case No. D2002-0726).
The record confirms that Complainant has been continuously using the mark TELEVISA since 1973, and that the mark has been registered in 62 countries, including Mexico, the United States, and the United Kingdom. The record also confirms that the Complainant has been using the mark TELEVISA ESPECTACULOS for its services nationally and internationally. The record confirms that the mark is undoubtedly associated with the Complainant. Therefore, the Panels finds that the Complainant has rights in the mark TELEVISA ESPECTACULOS.
As to the second question, the Panel finds that the domain name is identical to the "TELEVISA ESPECTACULOS" mark and confusingly similar to the Complainantís marks. The disputed domain name <televisaespectaculos.com> incorporates the Complainant mark "TELEVISA" with a generic word "Espectaculos" (which in Spanish means "entertainment" or "shows") and the generic top-level domain reference ".com". As a rule, when a domain name wholly incorporates a complainantís mark and adds a generic word that is sufficient to establish confusing similarity for purposes of the Policy. See Experian Information Solutions, Inc. v. BPB Prumerica Travel (a/k/a SFXB a/k/a H. Bousquet a/k/a Brian Evans) WIPO Case No. D2002-0367). Confusion is only heightened when the generic word added by Respondent is descriptive of the Complainantís services marketed in relation to the trademark. See, e.g., Volvo Trademark Holding AB v. Lost in Space, SA, WIPO Case No. D2002-0445; Arthur Guinness Son & Co. (Dublin) Ltd v. Steel Vertigogo, WIPO Case No. D2001-0020; and Arthur Guinness Son & Co. (Dublin) Limited v. Tim Healy/BOSTH, WIPO Case No. D2001-0026).
2. Does the Respondent Have Rights or Legitimate Interests in the domain name?
The Complainants submits that the Respondent has no rights or legitimate interests in the domain name based on Complainant's prior use of the "TELEVISA ESPECTACULOS" mark. The Respondent, whom did not file a Response, did not dispute this contention nor provide information as to its interests to use the domain name.
According to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
"(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 noncommercial 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."
There were no elements introduced in evidence to show that the Respondent is or was commonly known by the domain name. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the domain name. Quite contrary, the evidence suggest that the Respondent is using the disputed domain name for commercial gain, and that such use of the domain name may tarnish the Complainantís mark.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the domain name.
3. Was the domain name Registered and Used in Bad Faith?
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or 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 Respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent 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 Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's 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 Respondent's website or location or of a product.
There is evidence of the situation described in paragraph (iv) and some evidence of a pattern as contemplated in paragraph (ii). The relevant facts are mentioned below.
The Respondent registered the domain name in bad faith. Apart from the famous nature of the Complainantís marks, the domain name is identical to the Complainantís mark "TELEVISA ESPECTACULOS". It is reasonable to conclude that only someone who was familiar with the Complainantís mark would have registered the identical domain name. A number of decisions under the Policy stand for the proposition that in respect of famous marks, which have a higher level of protection in international intellectual property agreements (see e.g. Article 16(2) and (3) of the TRIPS Agreement), the person who registers a confusingly similar domain name should be willing to show an intention to express himself or herself by responding to communications and indicating good faith use of the domain name. See Pharmacia & Upjohn AB v. Dario H. Romero, WIPO Case No. D2000-1273; Advanced Micro Devices, Inc. v. [No Name], WIPO Case No. D2000-0515; Telstra Corporation, Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Encyclopaedia Britannica, Inc. v. Zuccarini and the Cupcake Patrol aka Country Walk aka Cupcake Party, WIPO Case No. D2000-0330; eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633 and Ellerman Investments Limited and The Ritz Hotel Casino Limited v. Antonios Manessis (trading as .com and manessis.com), WIPO Case No. D2001-1461. The Respondent did not respond to any communication from the Center and did not indicate good faith use of the disputed domain name in by any means.
It is difficult to conceive that Respondent chose to register domain name <televisaespectaculos.com> by accident. In fact, it is fairly difficult to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be infringing or the Complainantís marks.
In addition, the Respondent is using the disputed domain name for commercial purposes creating likelihood of confusion with the Complainantís marks. Users who visit the disputed domain name are offered links to various commercial and pornographic websites, as well as a link to the "Top TEN Search Engines in the world".
As to paragraph 4(b)(ii), although it is questionable whether the Respondent registered the domain name solely for the purpose of selling it to the Complainant, the Respondent is known to have registered in the past the domain names that correspond to well-known marks. The Panel does not express an opinion as to whether this ground alone would be sufficient for a finding of bad faith in this case but notes that it clearly reinforces the elements of bad faith use already mentioned.
The Panel finds for the Complainant on this third element of the test.
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, <televisaespectaculos.com>, be transferred to the Complainant.
Daniel J. Gervais
Dated: December 9, 2003.