WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
G Y J España Ediciones S.L. en C. v. Chesterton Holdings
Case No. D2007-1100
1. The Parties
The Complainant is G Y J España Ediciones S.L. en C., Madrid, Spain, represented by C´M´S´ Albiñana & Suárez de Lezo, Madrid, Spain.
The Respondent is Chesterton Holdings, California, United States of America, represented by Paul Raynor Keating, Esq., Barcelona, Spain.
2. The Domain Name and Registrar
The disputed domain name <muyjunior.com> is registered with Nameking.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 26, 2007. On July 27, 2007, the Center transmitted by email to Nameking.com a request for registrar verification in connection with the domain name at issue. On July 27, 2007, Nameking.com 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 August 3, 2007. In accordance with the Rules, paragraph 5(a), and after an extension of time was granted by the Center, the due date for Response was September 3, 2007. The Response (identifying the Respondent and also including the name of an individual “C/o” of a Spanish address in the body of the Complaint) was filed with the Center on September 4, 2007, receipt of which was acknowledged by the Center on the same date. Subsequent email communications were received by the Center from the Respondent’s representative flagging errors in the originally filed Response. An amended Response (identifying only the Respondent and omitting the name of the individual, but retaining the reference to a “C/o” Spanish address, apparently that of the representative) was filed with the Center on September 5, 2007.
The Center appointed John Swinson, José Carlos Erdozain and G. Gervaise Davis III as panelists in this matter on October 18, 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.
The Panel notes that both of the above-referenced Responses were received by the Center after the specified extended due date of September 3, 2007. However, the Panel has, in the interests of fairness, considered both documents.
4. Factual Background
The Complainant is the Spanish division of Gruner & Jahr (a German publishing company). The Complainant publishes a number of magazines in Spain, including the Spanish equivalent of Marie Claire and Cosmopolitan.
The Complainant also publishes a monthly general interest magazine called “Muy Interesante” (which literally translates in English to “Very Interesting”) and a related magazine called “Muy Interesante Junior” which is targeted towards children.
The Complainant has registered and uses trademarks in Spain over MUY INTERESANTE G+J (registered in November 1988) and MUY INTERESANTE JUNIOR (registered in October 2004).
The Complainant has also registered a number of domain names relevant to its publications including <muyinteresante.es> and <muyjunior.es>.
The Respondent is a domain name holding company founded in California, United States of America, which is listed in the Whois and has been confirmed by the Registrar as the registrant of record. An individual was identified expressly in the originally filed Response as currently having a “C/o” address in Barcelona, Spain. That individual’s name was excluded from the subsequently filed amended Response.1
The Respondent registered the disputed domain name <muyjunior.com> on September 12, 2005. The website at the disputed domain name is no longer active.
5. Parties’ Contentions
Extensive submissions were received from both parties in relation to this dispute.
The Complainant filed a detailed and comprehensive Complaint, and makes the following submissions and arguments:
The disputed domain name is confusingly similar to the Complainant’s MUY INTERESANTE JUNIOR trademark. The disputed domain name incorporates the Complainant’s registered trademark in abbreviated form which is sufficient for a finding of confusing similarity.
In addition, the Complainant has promoted and published its magazine “Muy Interesante Junior” using the abbreviated expression “Muy Junior”, and this is how the magazine is widely known. This can be seen by the fact that the covers of the magazine emphasise the words “Muy” and “Junior”, (more than “Interesante”) and the Complainant chose to register the domain name <muyjunior.es> as opposed to <muyinteresantejunior.es>. The disputed domain name is identical to the Complainant’s common and abbreviated use of its trademark.
The Respondent has no rights or legitimate interest in respect of the domain name. The Respondent has no registered trademark including the words “Muy” or “Junior”. There is no evidence that the Respondent is commonly known by this name.
There have been links on the disputed domain name which redirect to sexual and pornographic content of third party web pages. This demonstrates an intention to misleadingly divert customers to third party pages, damaging the reputation of the Complainant and tarnishing its trademark.
The domain name was registered and is being used in bad faith, because the Respondent is using the disputed domain name to link to adult and sexual content. The Respondent is thereby effectively forcing the Complainant either to acquire this disputed domain name, or to face a dilution of its trademark.
The Respondent is attracting Internet users to the disputed domain name for commercial gain. There are links to adult sites as well as links appearing to be to the Complainant’s “Muy Interesante Junior” magazine, although described as “Revista Muy Junior” (‘Revista’ translates to ‘magazine’ in Spanish). This demonstrates that the Respondent is fully aware of the Complainant’s trademark.
Intentionally attempting to attract members of the public for commercial gain through confusion with the Complainant’s mark is recognized as being an incident of bad faith. In particular, using confusion to expose children to pornographic material is damaging to the Complainant’s trademark.
Bad faith can also be inferred because the Respondent has previously been found to have registered and used other domain names in bad faith.
The Respondent also filed a detailed and comprehensive response and makes the following submissions and arguments:
The Complainant has only shown rights in its registered trademarks MUY INTERESANTE G+J and MUY INTERESANTE JUNIOR. The disputed domain name does not incorporate the entirety of these marks.
There is no evidence to support the Complainant’s claim that the registration of these trademarks should give the Complainant rights in “Muy Junior”. “Muy Interesante Junior” is substantially different from “Muy Junior”. “Interesante” is a necessary and repetitive term and the consistent identifier for the Complainant’s products so “Muy” or “Junior” are not the key terms. The Complainant has not registered a trademark over “Muy Junior”.
The fact that the Complainant itself refers to its publication as “Muy Junior” does not show that members of the public have come to reference the magazine as “Muy Junior” rather than “Muy Interesante Junior”. In particular, the evidence provided in the Complaint contains hardly any references to “Muy Junior” and when it does, the material does not bear any dates showing when the term was used.
The Complainant only registered the <muyjunior.es> domain name after the Respondent had registered the disputed domain name.
The terms “Muy” and “Junior” are inherently descriptive terms which translate to mean “very young”. In the case of an alleged trademark consisting of a descriptive term, the Complainant must prove a common law trademark right in the term by showing strong secondary meaning. Secondary meaning requires proof of the consumers’ association of the mark with a particular source or sponsor. No evidence of extensive use, revenue, circulation, advertising expenditure and subsequent distinctiveness was provided by the Complainant. In particular, there is no evidence of any use of the mark outside Spain. Any common law claim by the Complainants fails to take into account that the Complainant exists only in Spain while the Respondent lives in the United States.
Further, because “Muy Junior” is inherently descriptive, it shows that the Respondent has rights or a legitimate interest in the disputed domain name. The Respondent registered the disputed domain name without knowledge of the Complainant, before it had any notice of the Complainant’s trademark and also before the Respondent registered its <muyjunior.es> domain name.
The disputed domain name is being used in a “direct navigation” context, where links are provided by Google and outside the Respondent’s control and this has been found by Panels to be legitimate.
The Respondent commenced use of the disputed domain name before notice of this dispute. The mere fact that the Respondent uses the domain name to provide links to third party sites does not make it illegitimate.
There is no evidence of bad faith. There is no evidence that the Respondent acquired the domain name for the purpose of selling it to the Complainant. No offer to sell has been made since the Respondent first registered the disputed domain name in September 2005.
The Respondent had no knowledge of the Complainant at the time it registered the disputed domain name and has no connections with Europe where the mark is registered. The Respondent used or planned to use the term “Muy Junior” as suitable in the context of information and links relative to adolescents and their interests. Use of words in their descriptive sense, even where done in the knowledge of the existence of a trademark, does not amount to bad faith.
The Complainant has failed to show that the Respondent had actual knowledge of the Complainant’s marks at the time of registering the disputed domain name, and constructive knowledge does not apply under the Policy.
Previous cases found against the Respondent are insufficient to show a pattern of bad faith. The issue is whether the Respondent has acted in bad faith in this case.
The Complainant has relied upon exhibits which are mainly in Spanish (without translation) in violation of ICANN Policy.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(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 has been registered and is being used in bad faith.
The onus of proving these elements is on the Complainant.
A. Identical or Confusingly Similar
The Complainant has registered trademark rights in Spain over MUY INTERESANTE JUNIOR (Spanish trademark registration M 2.596.176/4). The disputed domain name is clearly not identical to this mark. In the abstract, it is arguable whether the disputed domain name is confusingly similar to the Complainant’s registered mark.
However, for the purposes of the Policy, trademark rights may exist even though the trademark may not be registered (see Uitgerverij Crux v W Frederic Isler WIPO Case No. D2000-0575).
The Complainant has presented evidence that the “Muy Interesante Junior” magazine it publishes is more commonly described as “Muy Junior”. On the magazine covers and other logo branding, the “Interesante” component of the title is small and insignificant in comparison to the terms “Muy” and “Junior”. The fact that the Complainant registered a domain name in the abbreviated form of its trademark supports its claim that the magazine is better known as “Muy Junior” within Spain.
It is evident from the various covers of the magazine, the Complainant’s own website and Internet searches that “Muy” and “Junior” are the dominant part of the Complainant’s branding for “Muy Interesante Junior”, and that the magazine is commonly referred to as “Muy Junior” by third parties.
The “Muy Interesante Junior” magazine has been distributed throughout Spain since 2004 and is a very popular publication. The Panel acknowledges that “Muy Junior” literally translated does mean “very young”. However in Spain, “Muy Junior” has become a distinctive identifier for the Complainant’s magazine and the Panel finds that the Complainant has for the purposes of the Policy established unregistered trademark rights in this name. The Panel rejects the Respondent’s claim that the generic and descriptive nature of the terms “Muy” and “Junior” precludes the Complainant’s having trademark rights in this case. (See Eurobet UK Ltd v. Intergate, WIPO Case No. D2001-1270).
The fact that trademark rights for “Muy Junior” may only exist in Spain (and not the United States where the Respondent was incorporated) does not limit the Complainant’s rights in an unregistered trademark. (see Skattedirektoratet v. Eivind Nag WIPO Case No. D2000-1314; Uitgeverij Crux v. W. Frederic Isler, WIPO Case No. D2000-0575). The Policy makes no distinction between localized and widespread trademark rights. (see Luis Cobos v. West, North (Nick Handle: JNMTOKTCQD), WIPO Case No. D2004-0182).
The Panel finds that the Complainant has unregistered trademark rights in “Muy Junior”. The disputed domain name is identical to this mark. The Panel therefore finds that the requirements of the Policy, paragraph 4(a)(i), are satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you 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 (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 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.” (Policy, paragraph 4(c)).
The Complainant has not granted the Respondent any license or other authorisation to use its trademarks in relation to the disputed domain name. There is no evidence that the Respondent is commonly known by the disputed domain name.
The Respondent also acknowledges that it has been using the disputed domain name for commercial purposes. At present, the disputed domain name is inactive and no use, commercial or otherwise, currently is being made of it. However, the Complaint shows that the disputed domain name has been used in the past to redirect to pornographic-related websites.
The Respondent contends that it was using the disputed domain name in connection with a bona fide offering of goods or services, by creating a website with advertising provided by Google, and that the disputed domain name does not usually redirect to pornographic sites. Using a generic or descriptive word or phrase for a website for what the Respondent calls “direct navigation” can in some circumstances be legitimate. However, the Panel believes that the Respondent is using the generic phrase “Muy Junior” to take advantage of the Complainant’s rights in the phrase (as opposed to profiting from the generic nature of the phrase), which precludes a finding of legitimate interest. (see Allocation Network GmbH v. Steve Gregory, WIPO Case No. D2000-0016). Further, a Respondent can lack a legitimate interest even if the disputed domain name is comprised of a generic word, where the website is used to sell or promote goods completely removed from the meaning of the generic term. (See Owens Corning Fiberglas Technology, Inc v. Hammerstone, WIPO Case No. D2003-0903).
The Respondent claims that it had no knowledge of the Complainant and was using the phrase “Muy Junior” in their descriptive sense as a suitable website for information and links related to adolescents and their common interests. This claim has to be doubted, because links to pornographic and gambling websites have appeared on the disputed domain name in the past, and such links are obviously not designed, or suitable for, a youthful audience. Such use of the disputed domain name demonstrates that the Respondent was seeking commercial gain by misleadingly diverting consumers looking for the Complainant’s website to its own website. The inclusion of pornographic-related links on the disputed domain name is also likely to tarnish the Complainant’s trademark which is used in respect of respect of young children.
The Respondent’s own website states that it is a domain name holding company which collects domain names “in clusters through highly developed and ground breaking automated technology and modules”. The Panel considers it unlikely that the Spanish phrase “Muy Junior” would be chosen by a United States-based company were it not aware of the Complainant’s extensive use of the term in Spain.
The Complainant has registered and used the <muyjunior.es> domain name in connection with an active commercial website dedicated towards the “Muy Interesante Junior” magazine since November 19, 2005. Despite the Respondent’s assertions that it registered the disputed domain name prior to the Complainant’s registration of <muyjunior.es>, the Respondent registered the disputed domain name (which is identical to the Complainant’s website, apart from the .com/.es suffix) on December 9, 2005.
While the Respondent claims to have had no previous knowledge of the Complainant or its trademarks prior to this dispute, the Respondent had an explicit link to “Revista Muy Interesante Junior” on the disputed domain name site. As “Revista” means “magazine”, this is clearly a reference to the Complainant’s “Muy Interesante Junior” publication. For this reason, the Panel rejects the Respondent’s contention that it had no knowledge of the Complainant’s business at the time of registering the disputed domain name.
The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name and the Respondent has failed to demonstrate such rights or legitimate interests. Accordingly, the Panel finds that Paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy enumerates four, non-inclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
Subparagraph (iv) includes circumstances where the Respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
The Respondent acknowledges that the disputed domain name has been used for commercial gain (through direct navigation advertising). It has also been established that the disputed domain name is identical to the Complainant’s unregistered trademark. Internet users are therefore likely to be confused as the source, sponsorship, affiliation, or endorsement of the Respondent’s website (believing that it is, or is related to, the Complainant’s website). The issue is whether the Respondent intentionally attempted to attract those Internet users to the disputed domain name.
The Respondent’s main contention in this respect is that it is using the phrase “Muy Junior” in the descriptive sense, without knowledge of the Complainant’s rights in the mark. However, the Panel can infer that the Respondent had knowledge of the Complainant’s mark.
The Respondent claims that it had no knowledge of the Complainant because the company was in Spain while it was based in the United States. Nonetheless, the Respondent chose two specific Spanish words to comprise the disputed domain name and the website located at the disputed domain name was written in Spanish. In addition, there was clear reference to the Complainant’s magazine on the disputed domain name website. Given these circumstances, it is difficult to believe that the Respondent was not aware of the Complainant, the “Muy Interesante Junior” magazine, or the Complainant’s rights in the “Muy Junior” mark.
Even if this were not the case, the Respondent cannot avoid a finding of bad faith by registering large numbers of domain names through the use of automated programs. On the contrary, showing willful blindness by using automated registration programs with no mechanism in place to weed out trademarks can be indicative of bad faith (see: Mobile Communication Service Inc v WebReg, RN, WIPO Case No. D2005-1304).
As discussed above, there is no reasonable relationship between the alleged descriptive sense of “Muy Junior” as it relates to young people and the former contents of the disputed domain name website. Links to pornography on a site likely to be visited by children has been held to evidence an intention to confuse Internet users and dilute the Complainant’s mark (see: Ferrero SpA v Alexander Albert W Gore, WIPO Case No. D2003-0513 and National Hockey League And Lemieux Group Lp v. Domain For Sale, WIPO Case No. D2001-1185). In this case, taking into account the Complainant’s target audience, the existence of pornographic links on the disputed domain name clearly tarnishes the Complainant’s mark.
The contents of the disputed domain name also at one stage offered products competing with those of the Complainant, which indicates further that the Respondent was aware of the Complainant’s business and its trademark and had the intention of earning commercial profits by diverting traffic away from the Complainant’s website.
The fact that the website has been inactivated, presumably during the course of these proceedings, does not prevent a finding that it continues to be used in bad faith.
For the above reasons, the Panel finds that paragraph 4(b)(iv) is satisfied in this case and that the registration and use of the disputed domain names has been in bad faith. Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied.
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, <muyjunior.com> be transferred to the Complainant.
José Carlos Erdozain
G. Gervaise Davis III
Dated: November 20, 2007
ADDENDUM / CORRIGENDUM
The Panel refers to a letter dated November 14, 2007 received from the Respondent’s Representative in these proceedings after the notification by the Center of the Decision on November 14, 2007. In particular, the Panel refers to the references made in Mr. Keating’s letter to the inclusion of the name of an individual in the previously notified Decision. The Panel has checked the Case File in this matter and has confirmed that the individual’s name was in fact identified in the Response originally filed by the Respondent on September 4, 2007. The Panel has also confirmed the filing of an amended Response by the Respondent in which the reference to this individual was removed. Accordingly, the Panel is prepared to accept the argument made by Respondent’s Representative in the above-referred letter that the initial inclusion of the reference to the individual in the originally filed Response was an inadvertent error by the Respondent’s Representative, which was subsequently corrected in the amended Response.
Accordingly, the Panel is satisfied that it would be appropriate for applicable references to that individual, and to a domicile or address of that individual in Spain, to be struck from the Panel’s Decision in this matter. In particular, the Panel has ordered certain amendments to its Decision which have been included above. The Panel also orders the re-notification of the above Decision to all parties and the Registrar
The Panel also wishes to clarify for the record that the amendments ordered are made in the interests of ensuring a fair and accurate record in this matter. However, they in no way effect the underlying rationale for the Panel’s Decision in this matter as set out above. The Panel has considered but is not swayed by the arguments made by the Respondent as to the substantive merits of the case. The Panel in drafting its Decision in this matter was very much of the view that the Respondent’s location in the United States was not a determinative factor, and the location or otherwise of Respondent in Spain was merely an additional incidental consideration. Indeed, in this day and age of the Internet and global communication networks, the geographical location of parties is increasingly meaningless in terms of imputed knowledge of marks and reputation.
The Panel accordingly confirms its Decision in favor of the Complainant and its above order that the registration of the domain name be transferred to the Complainant.
The formal date of notification of the Decision shall be the date on which the Center notifies the above amended Decision, including this Addendum / Corrigendum, to the parties and the Registrar.
José Carlos Erdozain
G. Gervaise Davis III
Dated: November 20, 2007
1 The Panel notes that the original Response filed by the Respondent identified as “Respondent” Chesterton Holdings. It also provided under a heading for “Respondent Information” the name of an individual listed as “C/o Renova Ltd” with an address in Spain, and, under “Authorized Representative”, the name of Mr. Keating, “C/o Renova Ltd.”, with an identical address in Spain. The amended Response, which the Respondent’s representative submitted with no explanation other than a previous general reference to “typographical errors” and an indication that the amended Response superseded previously filed documents, identified as “Respondent” Chesterton Holdings. It also provided under a heading for “Respondent Information” the name Chesterton Holdings listed as “C/o Renova Ltd.” with an address in Spain, and under “Authorized Representative”, the name of Mr. Keating, also “C/o Renova Ltd”, with an identical address in Spain. While it would have been helpful if more detailed clarification had been provided by the Respondent at the time of submitting the amended Response regarding the entities and individuals involved (or not) in the response process, the Panel is prepared to accept that the sole appropriate Respondent in this case is the entity listed in the WhoIs, Chesterton Holdings, and that Mr. Keating is the Respondent’s (presumably external) authorized representative.