WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Borges, S.A., Tanio, S.A.U. v. James English
Case No. D2007-0477
1. The Parties
The Complainant is Borges, S.A. And Tanio, S.A.U, Tarragona, Spain; represented by Propi S.L., Spain.
The Respondent is James English, Netwon, Massachusetts, United States of America, represented by Richard Stockton, United States of America.
2. The Domain Name and Registrar
The disputed domain name <borges.com> is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 28, 2007. On March 28, 2007, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On March 30, 2007, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 April 12, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 2, 2007. The Response was filed with the Center on May 3, 2007.
The Center appointed James A. Barker, José Carlos Erdozain and Dennis A. Foster as panelists in this matter on June 8, 2007. The Panel finds that it was properly constituted. Each member of 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 following facts are not contested.
Both Complainants (for convenience, referred to below together as ‘the Complainant’) belong to the Borges Group of Companies, which produce, commercialize, export and market seed oils, dried fruit and nuts. The Complainant conducts trade in a large number of countries, including in the Unites States of America where the Respondent resides.
The Complainant is the owner of registered trademarks in a large number of countries, as well as under the Madrid Protocol and on the principal register of the United States Patent and Trademark Office. The mark is typically registered in relation to oils (including olive oil), nuts and dried fruits. The Complainant also provided extensive evidence of its advertising in various countries, as well as magazine and newspaper articles relating to it, and its olive oil marketed under its BORGES trademark.
The Complainant maintains a website at “www.borges.es”. The Complainant’s group also owns a variety of domain names including its trading name “Borges” (among others), including <borges.biz>, <borgesgroup.com> and <borgesnetwork.com>.
The disputed domain name was first registered on February 24, 1996 (as indicated by the ‘creation date’ in the Whois record). The Respondent provided evidence of having acquired the disputed domain name on April 5, 2006.
The Respondent is an individual. He does not relevantly trade, nor own marks in connection with the disputed domain name.
On August 7, 2006, the Complainant contacted the Respondent by email, stating, in effect, that the Respondent had infringed the Complainant’s intellectual property rights and requested (among other things) the immediate cancellation of the disputed domain name. The Respondent’s response was that his interest in the disputed domain name was as a fan of the writer, Jorge Luis Borges, and that prior to the Complainant’s email, the “Borges” group was unknown to him. After a further email from the Complainant requesting the transfer of the domain name, the Respondent stated that he legitimately owned it and refused the Complainant’s inquiry about transferring it. (Evidence of these communications was attached to both the Complaint and Response.)
At the date of this decision, the disputed domain name does not revert to an active website. It reverts to a site apparently hosted by the Registrar, indicating that the website is “under construction”, and providing a list of links, mostly relating to the author Jorge Luis Borges (as well as some unrelated sites).
5. Parties’ Contentions
The following contentions were made by the parties, and are summarized under subheadings relating to the relevant element of the Policy.
Identical or confusingly similar
The Respondent acquired the disputed domain name, even though he has no relevant trademark. The Complainant’s trademark has become famous in Spain and other countries. The disputed domain name is identical to the Complainant’s BORGES mark. The fame of that mark increases the likelihood of confusion.
Rights or legitimate interests
If there is no doubt about the Complainant’s legitimate rights, there is no less doubt about the lack of the Respondent’s rights or legitimate interests. The Complainant emphasizes in this connection its heavy investment in marketing associated with its mark.
The Respondent has neither been authorized by the Complainant, nor has independent rights to use the BORGES name in the disputed domain name. The Respondent owns no relevant registered marks; does not conduct a bona fide business in relation to the mark; and is not commonly known by the disputed domain name.
The objective of the registration appears to have been to profit from the disputed domain name by selling it, or to take advantage of the Complainant’s well-known trademark, to confuse and divert Internet users to the Respondent’s website or other sponsored links for commercial gain and to the detriment of the Complainant.
There is no doubt that most consumers would immediately identify the “Borges” name and relate it to the Complainant. The Complainant markets its products extensively, and has agents in over 100 countries. The Complainant vigorously defends its intellectual property rights. Its BORGES mark is registered on the principal register of the USPTO. The first use of its mark in commerce in the United States of America was in 1983.
Panelists have found that bad faith can be inferred when the registration of the domain name involves a well-known mark. Among others, the Complainant cites Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163, where the then panel stated:
“It is clear that the Domain Names can only refer to the Complainant. Moreover the Domain Names are so obviously connected with such a well-known name and products that its very use by someone with no connection with the products suggests opportunistic bad faith.”
The Complainant also has a strong presence on the Internet, such that it was (among other circumstances) impossible that the Respondent was not aware of it.
Identical or confusingly similar
The disputed domain name is not identical to the Complainant’s trademark. That mark is a word and design mark. Previous administrative panels have found that disputed domain names are not identical to word and design marks. (For example, MAHA Maschinenbrau Haldenwang Gmbh & Co. KG v. Deepak Rajani, WIPO Case No. D2000-1816.)
Rights or legitimate interests
The Respondent has rights or legitimate interests in the disputed domain name. The Respondent is an avid fan of the author Jorge Luis Borges. The Respondent intends to use the disputed domain name in connection with a website relating to that famous author. (The Respondent provided various evidence of his interest in the author, including as a student of Spanish, photographs of his collection of Borges’ works, and emails with another - who also provided a declaration relating to this case - concerning the author.)
The Complainant has wholly missed the point of the “no rights or legitimate interests” element of the Policy. In the words of a previous panel, the Complainant appears to believe that:
“because its marks are famous and the Respondent knows of them, the Respondent could never have rights or legitimate interests in respect of domain names that wholly or partially incorporate those marks. Stated that broadly, the argument must be mistaken, for the entire point of the second element of the test is that it is quite possible for two, or even many, persons or entities to have rights or legitimate interests in respect of the same domain name. This element of the Policy is designed to weed out such cases…” (FMR Corp. v. Native American Warrior Society, Lamar Sneed, Lamar Sneede, WIPO Case No. D2004-0978.)
The Respondent did not register the disputed domain name in bad faith. The Respondent had no actual knowledge of the Complainant. None of the advertising provided as evidence by the Complainant was published in the United States of America, and so would not have been accessible to the Respondent.
There is insufficient evidence to show that the Respondent registered the disputed domain name in bad faith, in any of the circumstances set out in paragraph 4(b) of the Policy.
Reverse domain name hijacking
The Respondent seeks finding of reverse domain name hijacking against the Complainant. The Complainant has misrepresented facts to the Panel, such as statements that the Respondent registered the domain name 10 years ago. The Complainant has also exaggerated the scope of its trademark rights. Also, the disputed domain name reflects a mark that is likely to have multiple legitimate uses. For these reasons, the Complainant should have appreciated at the outset that the Complaint could not succeed.
6. Discussion and Findings
For the Complaint to succeed, under paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered in bad faith and is being used in bad faith.
The Complainant must prove each of these three elements, which are discussed in turn below.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is virtually identical to the registered trademark in which the Complainant has rights. The Complainant provided substantial evidence of those registered rights.
The Respondent argues that the disputed domain name is not identical or confusingly similar, since the Complainant’s mark is a word and device mark, rather than simply a word mark. That is, the Respondent appears to argue that the disputed domain name and the Complainant’s mark cannot be identical or confusingly similar, because the domain name only includes the word element of the Complainant’s mark. For support, the Respondent quotes from MAHA Maschinenbrau Haldenwang Gmbh & Co. KG v. Deepak Rajani, WIPO Case No. D2000-1816, as follows:
“The domain name registered by Respondent is not identical to the registered trademarks owned by Complainant. The domain name in question is <maha.com>. The relevant (name) part of this domain name is ‘MAHA’. The Complainant’s numerous trademark registrations concern word/device trademarks, they are not word marks consisting of the single word ‘MAHA’ – a fact that the Complainant has withheld in his complaint and which only becomes evident in checking the Annexes.”
However, contrary to what is apparently argued in the Response, that case did not stand for the general principle that a word and device mark cannot be identical or confusingly similar to a disputed domain name. Relevantly, the Respondent did not quote from the immediately subsequent words in that decision (which qualify the statement as reproduced in the Response) which were that:
‘These trademarks consist of the word “MAHA” - looking in fact rather like a picture - surrounded by figurative elements. A figurative mark, however, is not identical to the domain name in question consisting of the generic term “MAHA”. Dominant elements of the marks are the words “Maschinenbau Haldenwang”. This is probably, how the public would see the trademarks. (emphasis added)
That is, it is open to a Panel to make a finding under the first element of the Policy, based on the “dominant [word] elements” of a mark. There are two reasons for this.
Firstly, it is obvious that a mark, to the extent that it includes a device, cannot be reproduced in a domain name. To require some similarity with a device itself, for a finding under this first element of the Policy, would always place the owners of such marks at a significant disadvantage. The terms of the Policy include no such limitation against owners of such marks.
Secondly, it follows from the above (including the case cited by the Respondent) that whether a domain name is identical or confusingly similar to a mark, is to be judged against the dominant textual elements of a complainant’s mark. This approach is supported by a series of prior panel decisions. (See e.g. Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031, and the cases cited in that one. In that case, the panel noted that: “…graphic elements, such as the Sweeps design, not being reproducible in a domain name, need not be considered when assessing identity or confusing similarity.”) The nature of a design mark may be relevant to whether its textual components are sufficiently dominant. But this is something that can only be judged on a case by case basis – according to the nature of the mark in question. Put in other words, the more distinctive or particular the textual elements of the trademark, the greater the likelihood of it being identical or confusingly similar.
In this case, the dominant textual elements of the Complainant’s mark are the word “Borges”, which is prominently displayed over a device. In many of the Complainant’s marks, no other text appears together with that device. It is self-evident that the disputed domain name is identical to that dominant element of those marks.
For these reasons, the Complainant succeeds on this first element under the Policy.
B. Rights or Legitimate Interests
The Panel does not, however, find that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has presented substantial and plausible evidence of his rights or legitimate interests in the disputed domain name.
Relevantly, paragraph 4(c)(iii) of the Policy provides that a respondent may demonstrate a right or legitimate interest in a disputed domain name by showing that “you 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.”
This is what the Respondent has shown in this case. The Respondent claims and provides evidence (as outlined above, in the summary of the Respondent’s case) that he has an amateur interest in the author Jorge Luis Borges. For this purpose, the Respondent includes evidence of having obtained the disputed domain name recently, having a collection of works by the author and having discussed the author’s works with others (evidence by a third party declaration). The Respondent provided a declaration also attesting to these and other things, as well as indicating that his intention is to use the disputed domain name for a website relating to the author Jorge Luis Borges. There is no evidence that the Respondent acquired the disputed domain name for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark.
The Complainant’s claims against the Respondent are based, broadly, on two grounds.
One is that, in effect, the Respondent cannot demonstrate rights or legitimate interests under either paragraphs 4(c)(i) or (ii) of the Policy: That is, the Complainant claims that the Respondent is not making a bona fide offering of goods or services in connection with, and is not commonly known by the disputed domain name. The Complainant also makes other statements against the Respondent on this ground, including that the Respondent has no trademark rights and is not affiliated with the Complainant.
However, these claims are misplaced. The Respondent need only show that he has “a” legitimate right or interest - which is what he has done. The Respondent does not need to show that his rights or legitimate interests are better (however measured) than those of the Complainant.
The Complainant also contends that “the object of the [Respondent’s] registration appears to have been to profit from the name by selling it, or to take advantage of the Complainant’s well-known trademark, to confuse and divert Internet users to the Respondent’s website or other sponsored links for commercial gain”.
There is no evidence to support these claims. The Complainant’s claim that the Respondent has sought to sell the disputed domain name is inexplicable, given the prior communications between the parties, in which the Respondent clearly refused to sell or transfer the disputed domain name to the Complainant. Additionally, the Respondent provided evidence of inquiries to him from others, about the possible sale of the domain name, which he also refused.
Neither is there evidence to support the Complainant’s claim that the Respondent registered the disputed domain name to confuse Internet consumers. This claim (although not stated explicitly in the Complaint) appears to be based on the fact that the disputed domain name reverted to a webpage displaying various links, including to the author Jorge Luis Borges. However, the Respondent provided evidence of emails between himself and the Registrar. The Registrar confirmed that those links were beyond the Respondent’s control. The Registrar’s response to the Respondent noted that, for domain names registered with Network Solutions: “A domain automatically defaults to a Standard Under Construction page upon registration. The Standard may contain links for promotions and advertisements for Network Solutions’ Web site & product and service offerings.”
Finally, the Complaint is silent in relation to paragraph 4(c)(iii) of the Policy, despite its email communications with the Respondent before the commencement of these proceedings. In those email exchanges, the Respondent makes it clear that his interest is as he has stated it in this case. Despite this, the Complainant does not address or make a claim that the Respondent lacks a right or legitimate interest under paragraph 4(c)(iii) of the Policy.
For all these reasons, the Panel finds that the Respondent has established a legitimate interest in the disputed domain name. It follows that the Complainant has not established a case under this second element of the Policy.
C. Registered and Used in Bad Faith
Because of the Panel’s findings above, it is not strictly necessary for it to consider whether the Complainant has made its case under this element of the Policy.
Nevertheless, the Panel notes that it would also not find that the disputed domain name was registered and used by the Respondent in bad faith.
There is no evidence of any of the circumstances in paragraph 4(b) of the Policy, that would be evidence of bad faith, nor any other circumstances which might demonstrate the bad faith registration and use of the disputed domain name. In making this finding, the Panel has taken into account the following.
Firstly, a finding of bad faith registration and use requires at least evidence that the Respondent knew of the Complainant or its mark. The Respondent has plausibly denied having such knowledge of the Complainant. The word element of the Complainant’s mark is apparently subject to substantial third party use. It is not only identical to the surname of a worldwide known writer, but apparently also to other trademarks, all of which suggests that the word part of the Complainant’s trademark is not as distinctive as the Complainant would claim.
In other words, the more generic the word part of a trademark, in many cases the less distinctive it will be in the market, and the more difficult it will be to impute knowledge to the Respondent. In these circumstances, even if the Respondent had actively searched (before registering the disputed domain name) for prior rights in the term “Borges” - e.g. by typing that term into a search engine - it does not appear that he should have identified the Complainant as having distinct or exclusive rights in that term.
Secondly, and related to the first point, while the Complainant’s mark may be well-known in Spain, there is insufficient evidence that it is so well-known in the United States of America, where the Respondent resides, that the term “Borges” would be inseparably associated with the Complainant.
D. Reverse Domain Name Hijacking
The Respondent requests a finding of reverse domain name hijacking against the Complainant. Under paragraph 1 of the Rules, “reverse domain name hijacking” is defined as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
The Respondent makes this request based on claims that the Complainant misrepresented facts to the Panel; exaggerated the scope of its trademark rights; and was reckless as to the likelihood that the Respondent possessed a legitimate interest.
The Panel declines to make a finding of reverse domain name hijacking in this case.
What the Respondent characterizes as misrepresentations (e.g. the Complainant’s claim that the disputed domain name was registered by the Respondent for more than 10 years), might equally be characterized as errors or matters more easy for the Respondent to prove. What might be characterized as exaggeration could instead be characterized as a vigorous argument of its own case. The Panel also does not find that the Complainant was sufficiently reckless, on the facts of this case, as to the likelihood of the Respondent’s legitimate interests (although the Complainant perhaps comes close by disregarding the content of the Respondent’s emails to it prior to these proceedings). Rather, it appears that the Complainant genuinely misjudged breadth of recognition of its own mark, relative to the possibility of other legitimate interests in the disputed domain name.
For all the foregoing reasons, the Complaint is denied.
James A. Barker
José Carlos Erdozain
Dennis A. Foster
Dated: June 21, 2007