WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Caracol Primera Cadena Radial Colombiana S.A. d/b/a Caracol S.A. v. Diego Rubiano

Case No. D2003-0948

 

1. The Parties

The Complainant is Caracol Primera Cadena Radial Colombiana S.A., d/b/a Caracol S.A., Bogotá, D.C., Colombia, represented by Triana, Uribe & Michelsen, Colombia.

The Respondent is Diego Rubiano, New Jersey, United States of America, of United States of America, represented by Zara Law Offices, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <caracolny.com> is registered with Network Solutions, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 27, 2003. On November 28, 2003, the Center transmitted by email to Network Solutions, Inc. a request for registrar verification in connection with the domain name at issue. On December 3, 2003, Network Solutions, Inc. 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 and technical contact. On December 5, 2003, in Response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), 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 December 11, 2003. In accordance with the Rules, paragraph 5(a), the due date for response was December 31, 2003. On December 23, 2003, the Center extended the due date for response to January 7, 2004, following the request for an extension from Respondent. The Response was filed with the Center on January 7, 2004.

The Center appointed Roberto Bianchi as the sole panelist in this matter on January 14, 2004. 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.

On January 15, 2004, Complainant requested leave for admission of a Supplemental Filing. By Panel Procedural Order Number (1) of January 16, 2004, the Panel admitted Complainantís Supplemental Filing as refers to its paragraphs 5, 6 and 7 only, and requested Respondent to submit comments. On January 22, 2004, Respondent submitted its comments by email. On January 28, 2004, in compliance of Panel Procedural Order Number (2) of January 23, 2004, Respondent submitted a transcript of a radio broadcast with an interview of June 2000. Panel Procedural Order Number (2) also reset the due date for this decision from January 28, to February 4, 2004.

The Network Solutions, Inc. registration agreement is drafted in English. The Complaint and the Response are also in English. The Parties in this proceeding have enclosed documents in Spanish. Neither Party requested translations. This Panel confirms that the language of the administrative proceeding shall be English, and decides that no translations of enclosed documents are necessary because the parties and the Panel are fluent in both languages.

 

4. Factual Background

The Complainant was incorporated on November 7, 1956, and is devoted to the business of broadcasting, with several radio stations all across Colombia and abroad. It is uncontested and it has been proved with sufficient documentary evidence that Complainant has rights on the CARACOL mark issued in Colombia, as shown in the following table:

MARK

Number

Issued on

Expires on

Intntnl. Class

CARACOL

215878

22/02/1999

22/02/2009

International Class 9

CARACOL

216111

25/02/1999

25/02/2009

International Class 16

CARACOL

216109

25/02/1999

25/02/2009

International Class 35

CARACOL

214999

29/12/1998

29/12/2008

International Class 38

Complainant has submitted many other certificates of CARACOL registrations.

Respondent, domiciled in the United States of America, is the President of a company named Frecuencia Latina, Inc., doing business as a FM radio in the New York area. Respondent was interested in obtaining a license from the Complainant to act as a sub-carrier of the CARACOL radio stations in New York, United States of America. For a period beginning in 2000, Frecuencia Latina re-transmitted Ė as a sub-carrier Ė Complainantīs signal in the New York area.

On June 13, 2000, the domain name at issue was registered in Respondentís name.

 

5. Partiesí Contentions

A. Complainant

The domain name <caracolny.com> is confusingly similar to Complainantís marks. The Complainant, as the legitimate owner of the mark CARACOL, has not licensed or by any means authorized the Respondent to use its mark in a domain name. Complainant expressly prohibited the Respondent in several written communications to use its registered marks and any other intellectual property of the Complainant, without its previous approval. Respondent used the Complainantís logo widely in the web page at "www.caracolny.com" and the programming of his radio station was composed by programs transmitted by the Complainant. The Respondent gave the impression of being an authorized agent of the Complainant. Such use was being made even when the negotiations between the parties were broken. The Respondent acted knowing that he lacked rights and legitimate interests over the domain name. The Complainant accepts that it authorized the retransmission of its signal to the Respondent, as a demonstration of its disposition to negotiate a commercial relationship that was never materialized. This in no way entitled the Respondent to register and use the domain name <caracolny.com>. The negotiations held between the parties were not enough to give the Respondent legitimate interests or rights to register the domain name <caracolny.com>, or to identify himself as the Complainantís representative in New York. Respondent registered and uses the domain name at issue for an offering of goods and services for commercial gain that cannot be considered as a bona fide offering of the same. The Respondent announces the programming of his radio station Frecuencia Latina through the domain name <caracolny.com>, with the illegitimate purpose of creating a likelihood of connection with the Complainant, which was never formalized between the parties. The risk of confusion between the Complainantís mark CARACOL and the domain name <caracolny.com>, was the intentional purpose of Respondent when registering and using the domain name. The Respondent registered and uses the domain name with the purpose of misappropriating the goodwill of the Complainantís mark in the Latino market of New York, in bad faith, knowing that he lacks of rights over the expression CARACOL and with the intentional purpose of creating a likelihood of confusion with the Complainantís mark among the public, as to the source, affiliation or endorsement of his website. (Policy, paragraph 4(b)(iv)).

Respondent registered and used the domain name <caracolny.com>, knowing that he was not authorized to do so, and kept such situation undisclosed to the Complainant, until the Complainant found out about the existence of the domain name by itself, on 2003. This evidences that the Respondent was aware that he was not acting in good faith. Respondent registered the domain name, only days after the initiation of the negotiations between the Parties.

The misrepresentation made by the Respondent before third parties, identifying himself as a representative of the Complainant, went too far, since he took advantage of a number of investors interested in establishing relationships with the Complainant. This situation reached the newspapers, damaging the Complainantís name and prestige. The Complainant believes that the existence of the conflicting domain name helped the Respondent to create the false idea of being its authorized representative, and to collect money from investors who trusted in the Complainantís good name. Respondent always wanted to obtain a total authorization to use the Complainantís intellectual property rights in the United States of America. Complainant refused such proposals and insisted in reaching an agreement in which the use of its intellectual property was only permitted under its expressed consent. Under the terms set by the Complainant, it was obvious that the Respondentís actions with respect to the domain name <caracolny.com> were in bad faith.

Respondent registered and uses the domain name <caracolny.com> with the intention of capitalizing on the reliability of Complainantís mark, and of taking advantage of third partiesí trust in such mark. Respondent continued using the domain name, even when the negotiations between the parties had ceased, and without clarifying to the public that he was not authorized by the Complainant to act on its behalf.

The refusal to voluntarily transfer the domain name to the legitimate trademark owner, despite the request made by the Complainant, is an evidence of the Respondentís bad faith. The Respondentís domain name prevents the Complainant from reflecting its mark in the top level domain, accompanied by the geographic indication "NY".

B. Respondent

Respondent denies that he registered the domain name <caracolny.com>, without knowledge or consent of the Complainant, who knew of the existence of the domain name <caracolny.com> long before June 24, 2003. Before Respondent received any notice of the dispute, Respondent used the domain name in connection with a bona fide offering of goods and services. Complainant authorized Respondent to act as its affiliate and promote its services, when Complainant released the signal to Respondent, introduced him in national Colombian radio as its representative in NY and prepared promotional materials, which included Complainantís logo as unique characteristic of Complainantís affiliates. Complainant acquiesced in the use of Respondentís domain name, when they prepared and sent to Respondent promotional materials such as Power Point presentations, radio commercials with the voice of its own announcers, and price lists, all of which included a reference to "www.caracolny.com". Complainant acquiesced in the use of Respondentís domain name during the two years of its use by Respondent. Complainant knew about Respondentís promotional activities and never questioned or prohibited them. Thus, Complainant tacitly approved all of them.

Complainant acquiesced in the use of the domain name by Respondent, when after having knowledge of its creation, Complainant greeted the news well, and in fact included the domain name as part of the promotional materials it prepared for and sent to the Respondent. In the present case, the actions of Complainant clearly show that Caracol treated the domain name <caracolny.com> as acceptable for more than two years.

 

6. Discussion and Findings

A. Identical or Confusingly Similar

By submitting several registration certificates Complainant has evidenced that it has rights on the CARACOL mark, which pre-date the domain name registration. See Section 4 - "Factual Background"- above. The domain name was registered in June 2000, in the name of Respondent. A simple comparison between both identifiers shows that the <caracolny.com> domain name is confusingly similar to the CARACOL trademark and service mark. The addition of "NY" means "New York", a localization where the goods or services distinguished by the trademark CARACOL were to be provided, and the place where Respondent as president of Frecuencia Latina, a FM broadcaster of Queens in the New York area, conducted its business. Such addition cannot distinguish the domain name from the trademark or service mark because it is an accepted fact that Respondent knew at the time of registration that CARACOL was the name of the Colombian broadcasting company, and whose programming Respondent was willing to re-transmit in the New York area when the parties began their negotiations in May or June 2000. Accordingly the first requirement of UDRP, Paragraph 4 (a)(i) is met.

B. Rights or Legitimate Interests

Complainant denies that Respondent has rights or legitimate interest in the domain name, and contends that it has not authorized or consented the domain name registration. In particular, says Complainant, Respondent announces the programming of his radio station Frecuencia Latina through the domain name <caracolny.com> with the purpose of creating a likelihood of connection with Complainant. Amended Complaint, page 19. Respondent replies that Complainant acquiesced to the domain name registration and use.

Within the limited scope of these proceedings the panel has to determine whether Complainant has proved that Respondent lacks rights or legitimate interests in the domain name. The nature of the relationship between Complainant and Respondent for about two years since May or June 2000, is not particularly clear, but it appears from the record that following some negotiations in Colombia Respondent was authorized to re-transmit Radio Caracolīs programs in New York by means of a sub carrier which allowed to use special radio-receptors to listen the signal in FM.

According to Complainant Respondent was interested in buying the rights to retransmit the programs of Caracol in the New York area, for a monthly price. Both parties exchanged several contract drafts, none of which were agreed upon. After such period and particularly after Complainant came to know that Respondent had registered the domain name at issue, and after some Colombian businessmen in USA complained to Complainant about Respondentís fund raising activities, Complainant sent two cease-and-desist letters to Respondent, and requested Respondent to transfer the domain name to Complainant.

According to Respondent Complainant acquiesced to the domain name registration, and even encouraged its use as "www.caracolny.com". This Panel is not convinced that the email submitted by Respondent in Annex 6 to the Response has enough weight as to prove that by receiving one email signed "Diego Rubiano "nytelcom e-mail address", "hotmail address", "www.caracolny.com" the recipient Caracol should be held to have acknowledged on Complainantís behalf that Respondent was the registrant of the <caracolny.com> domain name. Nor is this Panel more inclined to believe that because a web designer of Caracol S.A. of Colombia sent an email to Mr. Rubiano at his hotmail address with CC (carbon copy) to his caracolny.com address, or because a representative of Caracol Miami sent an email to the Respondentís caracolny.com address, this necessarily means that Complainant Caracol S.A. has acquiesced to the domain name registration and use. The same applies to the email sent to Mr. Rubiano at <caracolny.com> by the Legal Counsel to Caracol S.A. Annex 7 to the Response.

However Respondent submitted other elements with more weight as to prove some degree of consent or approval by Complainant of the domain name registration or use. Inter alia Respondent alleges that Complainant itself recorded radio commercials inviting listeners to log onto "www.caracolny.com", and that Complainant sent copies of the commercials, which were recorded by Complainantís own announcers, to the Respondent. Response, page 5, and Annex 5 to the Response. The Panel has listened to the audio files of the commercial (Annex 5 to the Response). The translation of its transcript reads:

"If you thought that radio cannot be seen, come and watch us with your own eyes. Connect to the Frecuencia Latina web page, listen to us in Real Audio, and see how we do the best Hispanic radio in the United States. Visit us in double u double u double u dot caracol n y dot com. Frecuencia Latina. The voice of Colombians in the East coast of the USA. Frecuencia Latina is Caracol in New York, Long Island, Connecticut and New Jersey. The voice of Colombians in the East coast of the USA".[1]

In its Supplemental Filing Complainant did not question the authenticity of the audio files contained in Annexes 5 and 2 to the Response. The latter is an interview of June 2000, transmitted by the CARACOL Radio of Colombia. Its transcript provided by Respondent shows that Messrs. Carlos Gómez and Edgar Artunduaga of Radio Caracol called Respondent Mr. Diego Rubiano "manager of Caracol New York". Furthermore in the "Noche Buenos Días" radio program prepared for Radio Caracol and broadcasted from Medellín, Colombia, Respondentís radio station was called "Frecuencia Latina, Caracol Nueva York" by Complainantīs announcer. Annex 13 to the Response. The resulting impression of this Panel is that Complainantís own announcers identified Frecuencia Latina with Caracol in New York.

Complainant accepts that Respondent received from Complainant the co-ordinates to re-transmit the signal of Complainant, that Respondent was introduced as the Complainantís representative in different programs of the Complainant, and that Respondent received Complainantís logos, bulletins and publications, where there are even references to Respondent. According to Complainant, such is the treatment given by Complainant to its affiliates around the world. Complainantís Supplemental Filing, paragraph 3, page 2

In paragraph 6 of its Supplemental Filing Complainant calls the promotional materials enclosed by Respondent to the Response, "purportedly prepared by the Complainant". In coincidence with Respondent this Panel considers that Complainant does not deny that Complainant prepared and sent those materials to Respondent, including Annex 5, and that Complainant does not make any allegations of falsity or inaccuracy in its Supplemental Filing. Such failure to contest the authenticity of the evidence produced by Respondent equals to admission of its authenticity, because by submitting a Supplemental Filing Complainant itself decided to examine the documentary evidence submitted by Respondent in its Response. This has an important consequence in this proceeding, because Complainantís agents appear to be supporting the Respondent and providing Mr. Rubiano with some advertising materials that include the expression "www.caracolny.com" in connection with the programming of Frecuencia Latina, and even identify Frecuencia Latina with Radio Caracol ("Frecuencia Latina is Caracol in New York, Long Island, Connecticut and New Jersey"). There is a contradiction between Complainantís assertions in the Complaint according to which Respondent was never authorized to register or use Complainantís mark in a domain name, and the conduct of Complainantís agents in supporting and helping the advertising activities of Respondent, and producing and supplying commercials to advertise Frecuencia Latina FM radio by using the domain name at issue. Complainant is estopped from alleging a violation of trademark rights though the use of a domain name when the alleged violations were either consented or supported by Complainantís agents (estoppelís function being approximately the same as the prohibition of "venire contra factum proprium" in Civil law countries).

Because Complainant encouraged or endorsed the domain nameís use by Respondent, the former has failed to prove such lack of rights or legitimate interest. This Panel believes that the conduct of Complainantís agents in identifying Frecuencia Latina with Radio Caracol in New York engages Complainant as a principal. Because this proceeding is typically deprived of hearings, examination and cross-examination of witnesses, a panel must decide based mostly on documentary evidence, and having in mind the conduct of the parties during the proceedings. This Panel concludes that Respondent proved the allegation of Response, page 11, that before Respondent received any notice of the dispute its use of the domain name was in connection with a bona fide offering of radio broadcasting services (UDRP, Paragraph 4(c)(i)). This case is similar to Weber-Stephen Products Co. v. Armitage Hardware, May 11, 2000, WIPO Case No. D2000-0187, where the panel was "[s]atisfied that Respondent has presented sufficient evidence to prove that it has used the domain name in connection with the bona fide offering of Complainantís goods or services. It is apparent from the Respondentís web page that Respondent is selling Complainantís goods under Complainantís registered trademark. Although it appears that Respondent has also used its web page to sell (directly or indirectly) products other than Complainantís, these instances appear to be minor [Ö]. Complainant has failed to disprove that Respondentís use of the domain name in connection with Respondentís sales of Complainantís goods was made primarily in connection with the bona fide offering of goods or services."

Many questions remain open about the precise nature of the business relationship between Complainant and Respondent since May or June 2000, until late 2002. These proceedings are certainly not the proper forum to clarify such questions, which could better be dealt with by a court of the competent jurisdiction. In this case, as in Weber-Stephen, there are different views of the Parties about the existence and nature of an arrangement between them, and a similar conclusion applies: "If Complainant desires to obtain relief based upon some allegations that Respondent overstepped or overstated the bounds of its arrangement with Complainant, or that no such arrangement exists, that argument is better addressed to a court, which is equipped to resolve such complicated factual issues. On the record presented herein, this Panel must draw the conclusion that Respondentís use of its domain name was in connection with the bona fide offering of goods and services of Complainant."

C. Registered and Used in Bad Faith

The use of the domain name at issue as it appears in the printed version of the "www.caracolny.com" web page enclosed as Annex 61 to the Complaint does not support Complainantís contention that the domain name is used "with the intentional purpose of creating a likelihood of confusion with the Complainantís mark among the public, as to the source, affiliation or endorsement of his website" (Amended Complaint, page 20). Much of the text on the web page merely transcribes the schedule of programs of Radio Caracol as re-transmitted by Frecuencia Latina. This does not seem to be a bad faith use of the domain name, but a bona fide use because Respondent has posted apparently true information regarding its legitimate re-transmission of the signal of Radio Caracol. That the word "caracol" is used together with "NY" as the acronym for New York, and that the programs of Radio Caracol are re-transmitted by Frecuencia Latina does not seem improper having in mind that the parties had agreed thereupon. That some information about Frecuencia Latina itself appears on the web page under the domain name in dispute is not a bad faith use because Frecuencia Latina was the broadcasting facility in New York re-transmitting Complainantís signal, and a listener in the New York area looking for the Caracol programming could listen to such programs of Radio Caracol by setting the dial on FM 100.3 (Frecuencia Latina). Under the agreement between the parties to this dispute the use of Frecuencia Latina FM radio station was a necessary means of accessing Radio Caracol by using a FM radio set.

Complainant also contends that Respondentís domain name registration prevents the Complainant from reflecting its mark in the top [sic] level domain, accompanied by the geographic indication "NY". However Complainant has not alleged or evidenced that Respondent has "engaged in a pattern of such conduct" (the registration by Respondent of a plurality of domain names corresponding to marks belonging to third parties). Complainant has thus failed to evidence bad faith registration as described by UDRP, Paragraph 4(b)(ii) ("you 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"). Nor has Complainant presented any argument under which the panel should disregard the lack of the "pattern of conduct" requisite. There has been no allegation (or evidence) by Complainant that Respondentís registration was made with the purpose of extracting a benefit from the transfer of rights on the domain name for a price in excess of out-of-pocket costs (UDRP, Paragraph 4 (b)(i)). Nor has Complainant evidenced that Respondent registered the domain name with a purpose of disrupting Complainantís business (UDRP, Paragraph 4(b)(iii)).

Thus the requirement of UDRP, Paragraph 4 (a)(iii) has not been evidenced.

 

7. Decision

For all the foregoing reasons, the Complaint is denied.

 


 

Roberto Bianchi
Sole Panelist

Dated: February 3, 2004.

 


1. The original text in Spanish is: "Si Usted pensaba que la radio no se puede ver, venga y vťanos con sus propios ojos. Ingrese a la pagina web de frecuencia latina y escķchenos en Real Audio, y vea cůmo hacemos la mejor radio hispana de los Estados Unidos. VisŪtenos en doble u doble u doble u punto caracol ene ye punto com. Frecuencia Latina, la voz de los colombianos en la costa este de los Estados Unidos. Frecuencia latina es Caracol en Nueva York, Long Island, Connecticut y New Jersey. La voz de los colombianos en la costa este de los Estados Unidos".