WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Terana, S.A. v. RareNames, WebReg

Case No. D2007-0489

 

1. The Parties

The Complainant is Terana, S.A., Mexico City, Mexico, represented by Sergio Carlos Diaz Gonzalez, Mexico.

The Respondent is RareNames, WebReg, Washington, DC, United States of America, represented by Lowrie, Lando & Anastasi, LLP, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <terana.com> is registered with TierraNet d/b/a DomainDiscover.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 30, 2007. On March 30, 2007, the Center transmitted by email to TierraNet d/b/a DomainDiscover a request for registrar verification in connection with the domain name at issue. On April 2, 2007, TierraNet d/b/a DomainDiscover 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 13, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response May 3, 2007. The Response was filed with the Center May 3, 2007.

On May 10, 2007, the Complainant filed an unsolicited submission which included emails it had received from two law firms on behalf of the Respondent since the filing of the Complaint. On May 14, 2007, the Respondent objected to the admission of the Complainant’s unsolicited submission and also addressed the substance of that submission.

The Center appointed Alan L. Limbury, James Bridgeman and David E. Sorkin as panelists in this matter on May 24, 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

On August 31, 1995, the Complainant became the registered proprietor in Mexico of the trademark TERANA, Nos. 505794 and 505795, in respect of jellies, canned food, meat, preserved fruit and vegetables, marmalades, eggs, milk, milk products, comestible oil and fats.

The disputed domain name was registered on January 25, 2004.

On August 10, 2006, the Complainant applied to register the trademark TERANA in the United States, (Application No. 78949509), in respect of certain foods and beverages.

 

5. Parties’ Contentions

A. Complainant

The Complainant says the domain name <terana.com> is identical to its trade mark TERANA except for the inconsequential top-level domain “.com”.

Further, the Respondent has no rights or legitimate interests in respect of the domain name because:

(a) the Complainant has the exclusive right to use the TERANA denomination, and therefore any form of third party use will be considered name imitation;

(b) the Complainant has not accorded any type of right of use of the trade mark TERANA to the Respondent;

(c) the registration and use of the disputed domain name was for purposes of resale on “www.buydomains.com” and this does not establish rights or legitimate interests in the name.

The Complainant says the Respondent registered and is using the <terana.com> domain name in bad faith because the Respondent is offering it for sale at a substantial price (US $3,388.00) on the web site “www.buydomains.com”.

B. Respondent

The Respondent submits that, although the TERANA mark and the disputed domain name are essentially identical, the Complainant does not have exclusive rights because the word Terana is a mere common word, the subject of extensive third party use. It is also a geographic, botanical and personal name. Further, the Complainant applied to register the TERANA mark in the United States after the Respondent’s predecessor in interest registered the disputed domain name.

Further, the Respondent says that since Terana is a mere common word, the Respondent ipso facto has a legitimate interest in the domain name. Before notice to it of this dispute, the Respondent had used the domain name for the pay-per-click advertising of a variety of subjects, none of which correspond to the foods and beverages the subject of the Complainant’s United States trademark application. The sale of domain names is a legitimate business activity so long as the registrant is not targeting the Complainant or its mark.

The Respondent says it was unaware of the Complainant or its Mexican trademark registration at the time it registered the disputed domain name and there is no evidence to the contrary. This not only establishes the Respondent’s legitimate interest, it also precludes any finding of bad faith registration and use.

The Respondent relies on a sworn affidavit of Rochelle Hastings, the Legal Manager of Name Media Inc., the successor in interest to the named Respondent in these proceedings.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “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 that it deems applicable.”

Unsolicited supplemental filings are generally accepted only exceptionally, based on the particular circumstances of the case and the quality and importance of the supplemental filings and evidence. See Wollongong City Council v. Viva La Gong, WIPO Case No. D2003-0113; SES Astra S.A. v. Design Technology Ltd. (t/a Transcom ISP), WIPO Case No. D2002-1078; Nabor B.V. Stanhome S.P.A., v. Organization Francisco Vicente, WIPO Case No. D2000-0757; HER MAJESTY THE QUEEN, in right of her Government in New Zealand, as Trustee for the Citizens, Organizations and State of New Zealand, acting by and through the Honourable Jim Sutton, the Associate Minister of Foreign Affairs and Trade v. Virtual Countries, Inc, WIPO Case No. D2002-0754.

Here the Complainant seeks to introduce communications made after the filing of the Complaint, in which two law firms (the second of which is now representing the Respondent in this proceeding) sought to settle this dispute on behalf of the Respondent, upon payment being made for the domain name. The Complainant submits that the confusion as to who represented the Respondent and the Respondent’s willingness after the filing of the Complaint to transfer the domain name for money support its case on bad faith registration and use. Without considering whether the manifest ‘without prejudice’ nature of these communications, made with the object of settling this dispute, should render them inadmissible, the Panel regards them as having no probative value as to the Respondent’s intent at the time of registration of the domain name nor as to the Respondent’s use of the domain name prior to the filing of the Complaint. Accordingly the Panel pays no regard to the Complainant’s unsolicited submission.

Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The top level domain “.com”, is to be disregarded when considering whether the domain name is identical or confusingly similar to the trademark: Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429. The Complainant’s United States trademark registration application does not give rise to trade mark rights: see Aspen Grove, Inc. v. Aspen Grove, WIPO Case No. D2001-0798 and Spencer Douglass MGA v. Absolute Bonding Corporation, WIPOáCase No. D2001-0904.

However, the domain name <terana.com> is clearly identical to Complainant’s Mexican registered trademark TERANA.

The Complainant has established this element of its case.

B. Rights or Legitimate Interests

In light of the Panel’s findings in relation to the next element, it is not necessary to consider this one.

C. Registered and Used in Bad Faith

The word Terana is not exclusively associated with the Complainant. It has many uses, including a geographical, botanical and personal name. The Complainant has not asserted that its mark has ever been used in the United States of America, where the Respondent is based, nor has it asserted that its mark is famous or well-known. The Respondent has produced sworn evidence that it did not have the Complainant in mind and was not aware of the Complainant’s Mexican trademark when the Respondent registered the domain name. Under these circumstances the Panel is not satisfied to the contrary.

Unless the trademark owner or its mark are targeted by the domain name registrant, the offering for sale to the general public of a domain name and the generation of pay-per-click advertising revenue from a domain name do not constitute evidence of bad faith registration or use. An inference of targeting may be drawn from the inherent distinctiveness of the mark in question or from the circumstance that the mark is famous or well-known. A number of these factors have been enumerated in Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304. There is no such circumstance here, nor any other basis for a finding of bad faith registration on the part of the Respondent.

The Complainant has failed to establish this element of its case.

 

7. Decision

For all the foregoing reasons, the Complaint is denied.


Alan L. Limbury
Presiding Panelist


James Bridgeman

Panelist


David E. Sorkin

Panelist

Dated: June 7, 2007