WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Casa Editorial El Tiempo, S.A. v. Clubnatu.com
Case No. D2008-0167
1. The Parties
The Complainant is Casa Editorial El Tiempo, S.A., represented by Triana, Uribe & Michelsen, Colombia (hereinafter, the “Complainant”).
The Respondent is Clubnatu.com, Dominican Republic (hereinafter, the “Respondent”).
2. The Domain Name and Registrar
The disputed domain name is <portafolio.com> (hereinafter, the “Domain Name”).
The Domain Name is registered with Godaddy.com, Inc. (hereinafter, “Godaddy”).
3. Procedural History
The Complainant filed its complaint (hereinafter, the “Complaint”) with the WIPO Arbitration and Mediation Center (hereinafter, the “Center”) on January 31, 2008. On February 1, 2008, the Center transmitted by email to Godaddy a request for registrar verification in connection with the Domain Name. On February 1, 2008, Godaddy 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, billing, and technical contact.
After reviewing the Complaint, on February 22, 2008, the Center notified the Complainant that it was formally defective. Consequently, the Complainant filed an amended version of the Complaint on February 26, 2008. The Center verified that the Complaint, as well as the further amend filed by the Complainant, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (hereinafter, the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter, the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter, 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 February 27, 2008. In accordance with the Rules, paragraph 5(a), the due date for filing the response to the Complaint (hereinafter, the “Response”) was March 18, 2008, date where the Response was filed with the Center.
The Center appointed Mr. Albert Agustinoy Guilayn (hereinafter, the “Panel”) as the sole panelist in this matter March 31, 2008. 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 April 17, 2008, the Panel issued a panel order (hereinafter, the “Panel Order”) requiring the Respondent to file a number of documents relating to the alleged rights on several registered names in the Dominican Republic. In this First Panel Order the Respondent was required to submit the above-mentioned documentation no later than April 23, 2008. Moreover, the Panel Order foresaw that the Complainant would be entitled to file any comment it deemed necessary no later than April 30, 2008. As a result, the date for issuing the decision was set on May 8, 2008.
Due to technical problems connected with the electronic filing of the documentation by the Respondent and the further filing of comments by the Complainant, the date for filing the said comments as well as for issuing this decision were extended. Thus, the Complainant filed its comments on the supplementary filing made by the Respondent on May 5, 2008 and the decision was foreseen to be issued on May 10, 2008.
The Complaint was filed in English and the Response was filed in Spanish. Actually, the Respondent filed his Response written in Spanish and in several communications sent to the Center the Respondent recurrently alleged that Spanish should be the language of this proceeding since both parties involved are based in Spanish-speaking jurisdictions. Considering that the registration agreement applying to the Domain Name is in English, the Panel must make a determination as to the language in the proceeding.
Paragraph 11(a) of the Rules clearly states: “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise.” Moreover, taking into account the fact that the language used by Godaddy is English and that the Respondent was able to register by himself the Domain Name (registration that had not been possible in case the Respondent had no knowledge at all of the English language), the Panel determines that English will be the language of this proceeding.
Having said this, the Panel has not deemed necessary to require the Respondent to translate the Response and his supplemental filing from Spanish into English, as both parties have clearly shown their proficiency in the Spanish language. In the same sense, and in order to keep a balance between both parties, the Panel has authorized the Complainant to file its comments on the supplemental filing made by the Respondent in Spanish.
5. Factual Background
a. The Complainant
The Complainant is a Colombian company established on February 1, 1956, and since its incorporation it has been involved in the operation of media activities. Indeed, the Complainant is the publisher of a number of Colombian newspapers (such as “El Tiempo”) and magazines (such as “Alo”, “Cambio”, “Carrusel”, “Motor”, “Abc del Bebe” or “Don Juan”). More particularly, the Complainant has been publishing since 1993 the business newspaper named “Portafolio”, one of the most recognized economy publications in Colombia.
The Complainant is the owner of a number of Colombian trademark registrations totally or partially based on the name “Portafolio” like, for example, the following ones:
- Trademark No. 20016 PORTAFOLIO, registered since May 27, 1993 under Class 16 of the International Nomenclator;
- - Trademark No. 281217 PORTAFOLIO, registered since May 27, 1993 under Class 35 of the International Nomenclator; or
- Trademark No. 188819 PORTAFOLIO, registered since March 13, 2002 under Class 36 of the International Nomenclator.
The Complainant claims that it has also registered the “Portafolio” trademark in different Latin American jurisdictions such as Peru, even though it has only provided evidence of registration in this latter jurisdiction.
Moreover, the Complainant has consolidated its presence on the Internet by means of different websites connected to their publications. Among other ones, the Complainant currently operates the websites “www.portafolio.com.co”, “www.eltiempo.com”, “www.vive.in” or “www.motor.com.co”.
b. The Respondent
The Respondent is a Dominican Republic citizen named Julio Rodríguez Reyes operating on the Internet through the domain name <clubnatu.com> (among other ones). In accordance with the information provided by the Respondent during this proceeding he is one of the Internet pioneers in the Dominican Republic, having been engaged for long time in the provision of technical and publishing services on behalf of Dominican entities and individuals, as well as in the operation of online businesses. Thus, for example, the website connected with <clubnatu.com> hosts a commercial platform for the sale of medical products based on traditional recipes.
c. The Domain Name
The Domain Name was registered by the Respondent on June 8, 1997. According to the explanations given by the Respondent, the Domain Name was registered on behalf of a supposed Dominican Republic company named Portafolio 92, S.A. (the Respondent then being the responsible for Internet projects in the said company).
Apparently the Domain Name was aimed at hosting an online catalogue of creative services provided in the Dominican Republic. According to a written statement dated on April 24, 2008 and issued by Mr. Hernández Fontana (the alleged CEO of Portafolio 92, S.A. in 1997), the production and distribution of the above-mentioned catalogue was discontinued in 1998. In spite of this, supposedly Portafolio 92, S.A. ordered the Respondent to maintain the registration of the Domain Name and allowed him to make any other use he deemed convenient.
At the moment the Complaint was filed, the Domain Name was linked to a website written in Spanish where a number of links corresponding to generic categories of products or services (such as, for example, “travel”; “media”; “mortgages”; or “computers”) were available. By clicking any of the said links a new webpage was displayed, containing other links to websites offering or promoting different products or services of the chosen category. Such contents were complemented with numerous banners and other type of online advertisements (such as pop-up screens advertising third-parties’ products or services).
During the course of this proceeding the above-described contents have been complemented by the introduction of a link in the upper side of the homepage of the said website with the following text in Spanish: “El Tiempo editorial house tries to rob portafolio.com”. In the corresponding webpage a long text is included, describing (in quite a subjective manner) the evolution of the dispute derived from the registration and use of the Domain Name.
Regardless of the current contents connected to the Domain Name, the Complainant has provided evidence showing that the website linked to Domain Name displayed for more than one year logos and contents used by the Complainant in connection with the online edition of its “Portafolio” business newspaper. Such contents were withdrawn from the said website shortly after the Complainant sent the Respondent a cease-and-desist letter constraining him to cease using such contents and logos as well as to transfer the Domain Name to the Complainant.
The Panel has made a research of the historic contents connected to the Domain Name (by means of the public historic website contents research platform Archive.org –located at “http://www.archive.org-”) and has been able to confirm that such contents were displayed, at least, several months during 2006. Moreover, the Panel has also been able to find out that other contents have been connected with the Domain Name since its registration. In particular:
- During a period of time covering, at least, since April 29, 1999 until December 2001, the website connected with the Domain Name contained a webpage offering information on a supposed catalogue of creative services available at the Dominican Republic;
- During a period of time covering, at least, since Jul 2004 until May 2006, the website connected with the Domain Name hosted a generic corporate website to be developed; and
- During a period of time covering, at least, since June 2006 until August 2006 the website connected with the Domain Name was publicly offered for sale through a professional domain name selling platform.
Before filing the Complaint the Complainant sent the Respondent a cease-and-desist letter dated May 31, 2007, urging the latter to transfer the Domain Name in order to settle any dispute between them in connection with this issue. The Respondent did not make any formal reply to such a letter. The only actual outcome derived from the transmittal of the said letter was that the contents included in the website connected with the Domain Name were modified by the Respondent and references to the Complainant’s newspaper and articles published in it were no longer displayed in the said website.
6. Parties’ Contentions
The Complainant contends in the Complaint that:
- It is the owner of different trademark registrations in Colombia and Peru based on the name “Portafolio”. This name has been used since 1993 by the Complainant for the publication and distribution of a business newspaper in Colombia. Having launched its online edition of the “Portafolio” newspaper, many of its clients contacted the Complainant in order to warn it that the Domain Name was active and that it hosted identical contents to the ones posted in the said online edition. The Complainant verified that the Respondent was indeed reproducing its contents in the website connected with the Domain Name and, after having unsuccessfully tried to reach an amicable solution for the transfer of the Domain Name, filed the Complaint;
- The Domain Name is identical to the “Portafolio” trademark-registrations it holds, since the only difference existing at this respect is that the Domain Name contains the “.com” suffix. According to the Complainant such a difference is not relevant at all, as it has been considered in numerous decisions adopted according to the Policy;
- The Respondent has no rights or legitimate interests in the Domain Name because he has neither been authorized to use the “Portafolio” trademarks owned by the Complainant nor has he made a non-commercial or fair use of it, nor has been commonly known by the Domain Name. In this respect, the Complainant indicates that the Respondent cannot prove that he is commonly known for the development of financial activities since the date of registration of the Domain Name, nor that he has prepared a portfolio of financial products such as money management, saving money, credit cards, etc. Moreover, the Complainant contends that, taking into account the websites currently operated by the Respondent, the Respondent is engaged merely in pharmaceutical and tourism activities. In consequence, the Complainant argues that the Respondent cannot prove that he is well-known in the financial business in his country;
- The Respondent is clearly aware of the existence of the Complainant and, in particular, of the “Portafolio” newspaper. Therefore, the Complainant considers that the Respondent deliberately registered the Domain Name in bad faith for the purpose of unlawfully diverting consumers to its own website and create confusion among the Internet users with regard the Complainant’s trademarks and newspaper;
- The Respondent has used and currently uses the Domain Name in bad faith as the corresponding website includes a number of links that deviate visitors to other websites with financial contents. According to the Complainant, such a use of the website connected with the Domain Name reflects that the only purpose of the Respondent in connection with the use of the Domain Name was to unfairly benefit from the Complainant’s trademarks and prestige connected with them;
- During the telephone contacts held with the Respondent before filing the Complaint, in consideration for the eventual transfer of the Domain Name the Respondent asked a price clearly higher than the expenses he had incurred for the registration and maintenance of the Domain Name. According to the Complainant such a behavior constitutes clear evidence of bad faith behavior by the Respondent;
- For the reasons described above, the Domain Name should be transferred to the Complainant.
In the comments issued by the Complainant in connection with the supplemental filing made by the Respondent, the Complainant contends that:
- Contrary to the statements included in the Response and pursuant to the supplemental documentation filed by the Respondent as a consequence of the Panel Order, the Respondent does not hold any registration in the Dominican Patent and Trademark Office based on the name “portafolio”;
- The materials allegedly related to the catalogue of services named “Portafolio” are clearly insufficient to consider its actual existence. In this sense, the Complainant indicates that the materials provided by the Respondent in his supplemental filing are dated on 1998 and 2000. Moreover, according to a certificate issued by the supposed general director of the company Portafolio 92, S.A., the registration and use of the Domain Name had been made by the Respondent in his quality of Internet manager in the said company and not in his own name. Consequently, the Complainant considers that the Respondent could never have a real legitimate interest on the Domain Name since the corresponding registration was made on behalf of a company he was working for. In the same sense, the Complainant deems that the veracity of the above-mentioned certificate is questionable since it is based on a strange verbal agreement executed with the Respondent and reflected in a certificate issued one day before the expiration of the term granted by the Panel in order to file the documentation requested according to the Panel Order;
- The above-mentioned suspicions on the veracity of the explanations given by the Respondent are increased taking into account the fact that the Complainant has been able to verify that no actual company named Portafolio 92, S.A. has been or is registered before the Chamber of Commerce of Santo Domingo (where the said company was allegedly domiciled);
- The Respondent has not provided any evidence supporting other plans of use of the Domain Name such as the activation and operation of a hosting service connected with the Domain Name; and
- The texts included in the website connected with the Domain Name once the Complainant has been registered are mostly false and defamatory against the Complainant.
The Respondent contends in the Response that:
- The Domain Name is connected with the operation of “Portafolio”, the first and only catalogue of creative services in the Dominican Republic. Pursuant to the Respondent’s allegations, such catalogue was originally operated by a Dominican company named Portafolio 92, S.A. At the moment the Domain Name was registered the Respondent was the director of production at Portafolio 92, S.A.;
- Once the publication and distribution of the above-mentioned “Portafolio” catalogue was discontinued, the Respondent decided to focus the operation of the Domain Name towards the establishment of a global Internet portal based on a Spanish generic name such as “Portafolio”. According to the Respondent, since 1998 the operation of the Domain Name has been based on the said project and it currently hosts a big number of different categories offering access to different websites that may be of interests for the Internet users;
- In addition, the Respondent has been considering since 2004 the possibility of providing hosting services by means of the Domain Name. In this sense, according to the submissions made in the Response, during the last months of 2007 the Respondent has held conversation with a company named Resellerspanel.com. Nowadays such service is still provisionally provided, even though the Respondent indicates that it has been extremely successful among Internet users;
- The Respondent holds commercial names registered before the Dominican Republic Trademark and Patent Office based on the name “Portafolio”;
- The Respondent has received numerous offers of purchase of the Domain Name, even though he has rejected all of them, including an anonymous offer that, under the opinion of the Respondent, was made by the Complainant itself;
- The Complainant claims to have a universal right on the name “Portafolio”, in spite of holding trademark registrations only in Colombia and Peru. At this respect the Respondent points out that there exist many other generic and country-coded domain names based on the name “portafolio” registered by third parties different from the Complainant. The Respondent states that the Complainant should also file actions against such registrations in order to maintain a coherent position, but it has not done so;
- Taking into account the above-described elements, the Respondent considers that the Complaint is a clear attempt of reverse domain name hijacking and that the Complainant has actually filed the Complaint relying not on legal grounds but on its connections with the Santos family, one of the wealthiest families in Colombia; and
- Taking into account the above-described circumstances, the Complaint should be rejected.
As a consequence of the Panel Order, the Respondent made an additional filing containing the following documents:
- Print-outs of the original “portafolio” catalogue as originally published and distributed;
- Copies of the registrations held by the Respondent in the Dominican Republic Trademark and Patent Office;
- A certificate apparently issued by Mr. Hernández Fontana, identifying himself as one of the directors of a Dominican company named Portafolio 92, S.A., and explaining the reasons that lead the Respondent to register and use the Domain Name;
- Other documentation relating to the “portafolio” catalogue.
7. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that the following three circumstances are given in this case in order to obtain the transfer of the Domain Name:
(A) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(B) that the Respondent does not have rights or legitimate interests in respect of the Domain Name; and
(C) that the Domain Name has been registered and is being used by the Respondent in bad faith.
Consequently, the Panel shall further analyze the eventual concurrence of the above-mentioned circumstances in the present case.
A. Identical or Confusingly Similar
The first element required by the Policy is that the Domain Name and the PORTAFOLIO trademarks owned by the Complainant are identical or confusingly similar.
In the present case, the only difference between them consists in the inclusion of the “.com” suffix in the Domain Name. Nonetheless, such a difference is directly derived from the current technical structure of the Domain Name System (DNS) and, consequently, they should not be considered as relevant differences between the Domain Name and the Complainant’s PORTAFOLIO trademarks.
Many decisions adopted under the Policy have taken this approach (see, for example, New York Life Insurance Company v. Arunesh C. Puthiyoth, WIPO Case No. D2000-0812 or A & F Trademark, Abercrombie & Fitch Store, Inc., Abercrombie & Fitch Trading Co., Inc. v. Party Nigh Inc.t, WIPO Case No. D2003-0172) and, consequently, the Panel considers that the Complainant has fulfilled the first one of the conditions required by the Policy.
B. Rights or Legitimate Interests
Based on the Panel’s findings further below under “Registered and Used in Bad Faith”, it is not necessary for the Panel to make a finding under the second element of the Policy.
C. Registered and Used in Bad Faith
The third of the elements foreseen by paragraph 4(a) of the Policy is that the Complainant proves that the Respondent has registered and is using the disputed domain name in bad faith.
These conditions are cumulative, as stated in many decisions adopted under the Policy (World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001 or Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001, for example). This question is particularly relevant in the present case.
Indeed, the Panel considers that the Complainant has provided evidence suggesting that the Respondent has used the Domain Name in bad faith. In this respect, it may be noted that the Respondent has used the Complainant’s “Portafolio” trademarks and the Complainant’s websites contents at the website connected with the Domain Name. Moreover, the Panel notes that, at a certain time, the Domain Name has been offered for sale in a public auction site in the Internet.
Nonetheless, the same clarity does not exist concerning the bad faith at the time of registration by the Respondent of the Domain Name. Two factors must be taken especially into account:
- On the one hand, the Domain Name was registered on June 8, 1997, this is more than ten years before the Complaint was filed and only around four years following the registration of the Complainant’s trademarks in Colombia and the launching of the “Portafolio” business newspaper in the said country.
- On the other hand, the Domain Name corresponds to a Spanish generic name. Certainly, the word “portafolio” is defined in the Spanish Royal Language Academy (Real Academia Española) as a “briefcase for carrying books, papers, etc.” (English translation of the original Spanish text “cartera de mano para llevar libros, papeles, etc.”). The word “portafolio” is ordinarily used in the Spanish language for designating a number of investments controlled by a same person as in the English language “portfolio”).
As indicated above, according to the Policy and the criteria set out by previous UDRP decisions, the Complainant is required to prove that the Respondent has not just used the Domain Name in bad faith but that the Domain Name was also registered in bad faith. This is to say, the Complainant should prove that at the time of registration of the Domain Name, the Respondent was aiming at using or profiting unfairly from the trademarks owned by the Complainant. In this case, pursuant to the evidence provided by the parties, it does not seem that such an intention was given. In order to reach that conclusion the following elements are taken into account:
- At the time of registration of the Domain Name (as well as during the further term of use of the Domain Name) the Respondent apparently was living in the Dominican Republic, a different jurisdiction from the one where the Complainant is domiciled and operates most of its business;
- At the time the Domain Name was registered the Complainant had focused the distribution and promotion of its “Portafolio” business newspaper (and, hence, of the corresponding trademarks) basically in the Colombian territory. As a matter of fact, such a distribution and promotion had taken place only for about four years. Taking into account these circumstances, and the evidence filed during this proceeding, the Panel finds that the Complainant’s trademarks were not internationally well-known; and
- As indicated above, the word “portafolio” in Spanish has a generic meaning. Hence, the Panel considers that, rather than aiming at benefiting from the reputation and recognition connected to a Colombian newspaper, the Respondent was attracted by the generic character of the Domain Name.
Considering all these circumstances, the Panel considers that the Complainant has not proven that the Respondent registered the Domain Name in bad faith.
The Panel considers that the Complainant has failed to prove the concurrence of the third element required by the Policy. It is to be noted that numerous decisions have considered that the conjunctive requirement connected to the third element of the Policy must lead to the denial of any complaint that does not establish both the registration and use in bad faith of the disputed domain name (see, for example, Teradyne, Inc. Teradyne, Inc. v. 4Tel Technology, WIPO Case No. D2000-0026; Tarkan Tevetoglu and H.I.T.T. Muzik Produksiyon Tanitim Turizm Sanayi Ve Dis Ticaret Ltd.Sti., v. Deep.Net Corp., WIPO Case No. D2002-0278; Yoomedia Dating Limited v. Cynthia Newcomer / Dateline BBS, WIPO Case No. D2004-1085; or Guildline Instruments Limited v. Anthony Anderson, WIPO Case No. D2006-0157).
8. Reverse Domain Name Hijacking
Taking into account the circumstances indicated in the previous paragraphs (and the fact that the Complainant filed the Complaint as a reaction to the unauthorized use by the Respondent of the Complaint’s trademarks and website contents), the Panel considers that the circumstances of this case do not indicate reverse domain name hijacking.
For all the foregoing reasons, the Complaint is denied.
Albert Agustinoy Guilayn
Dated: May 19, 2008