WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
T.V. Azteca, S.A. de C.V. v. Dinoia Michele
Case No. D2008-0787
1. The Parties
The Complainant is T.V. Azteca, S.A. de C.V., Mexico City, Mexico, represented by Arochi, Marroquin & Lindner, S.C., Mexico.
The Respondent is Dinoia Michele, Italy, represented by Valerio Donnini, Italy.
2. The Domain Name and Registrar
The disputed domain name <hechos.com> is registered with Tuonome.it SRL.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 20, 2008, referring to another entity (namely SZK.com) as the respondent. In response to a notification by the Center, the Complainant filed an amendment to the Complaint on May 26, 2008. On May 30 and on June 2, 2008, the Center transmitted by email to Tuonome.it SRL a request for registrar verification in connection with the domain name at issue. On June 3 and 4, 2008, Tuonome.it SRL transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 9, 2008 naming the Respondent as Dinoia Michele. 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”), 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 June 11, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 1, 2008. The Response was filed with the Center on July 1, 2008.
The Center appointed David J.A. Cairns as the sole panelist in this matter on July 15, 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.
4. Factual Background
The Complainant T.V. Azteca, S.A. de C.V. is a Mexican television corporation that broadcasts the news program “Hechos” since 1994 through the Azteca 13 Channel.
The disputed domain name is composed of the word “hechos”, which means “facts” in the Spanish language.
The Complainant is the owner of numerous trademark registrations in Mexico consisting of or including the word ‘hechos’, including registration Nš. 568,650 of the word mark HECHOS based on a first use of February 21, 1993.
The disputed domain name was first registered by the Respondent on May 18, 2002. As recently as May 19, 2008, the disputed domain name was registered by SZK.com, when the current Respondent appeared as the ‘Administrative, Technical Contact’ together with SZK.com. The disputed domain name is currently registered by the Respondent with Tuonome.it SRL.
The Panel accessed the web page of the disputed domain name on July 23, 2008, and observed that it differed from the evidence of the website content submitted by the Complainant on May 20, 2008. The previous site was in English and contained links including “resources and information on Cable TV and Television”. The current site is in Spanish, specifically aimed at the Latin American Internet community (“comunidad de navegantes hispanos”) and offers e-mail, chat and forum services. Some of the current website’s links display advertisements and information in Italian.
There has been a previous decision relating to the disputed domain name in Todito.com, S.A. de C.V. v. Michele Dinoia, WIPO Case No. D2002-0620. The respondent in this Decision is the Respondent in the present case. However, there was a different complainant in the earlier decision, being a licensee of the current Complainant in respect of certain audiovisual materials. In this earlier decision the Complaint was denied.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant states that HECHOS is not only a registered trademark but is also well-known by Mexican audiences since 1994.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name because: (i) before the Respondent was given notice of the dispute, no proof exists that the owner has actually used the domain name and the content of the webpage “www.hechos.com” bears no logical relationship with the word “hechos”; (ii) the Respondent is not commonly known under the disputed domain name; and (iii) the Respondent does not make a legitimate use and fair or non-commercial use of the disputed domain name since the word “hechos” is used in an absurd and arbitrary manner.
The Complainant contends that the disputed domain name was registered and is being used in bad faith since: (i) “hechos” is not a common or ordinary word in the business, professional or academic field but a distinctive mark registered as trademark, well-known in Mexico and in other countries; (ii) SKZ.com has already lost several cases in WIPO for registering domain names in bad faith; (iii) the disputed domain name has been registered for more than 5 years without any use; (iv) the disputed domain name was the subject of a prior WIPO Decision in a complaint brought by a licensee of the Complainant, and up to date the disputed domain name is still not in use; (v) the Respondent recently changed the registrar of the disputed domain name when the process began in order to add obstacles to the present proceedings; (vi) the Respondent knew at the time of registration that the disputed domain name is related to a famous TV news show in Latin America, which led him to register a domain name in a language other than Italian; and (vii) SKZ.com is engaged in a pattern of registering domain names that are popular in different countries and has already lost numerous cases.
The Respondent denies that the disputed domain name is confusingly similar to the trademark HECHOS since: (i) “hechos” is a generic word that is not suggestive of the services of the Complainant; (ii) “hechos” must be considered a common descriptive word when used in contexts outside the services provided by the Complainant; (iii) there is no evidence that the word “hechos” on its own has acquired a secondary meaning or distinctiveness, particularly outside Mexico; (iv) there is no evidence that the Complainant is identified with that name; and (v) the Complainant has not produced any evidence that the disputed domain name has caused confusion, nor is that possible given the different services provided by the Parties and the content of the site.
The Respondent contends that it has rights and legitimate interests in the disputed domain name since: (i) the Respondent is using the disputed domain name for a bona fide offering of goods and services consisting of a commercial use for extended periods in the form of third-party marketing and pay-per-click advertising; (ii) the word “hechos” was selected because of its considerable commercial value with many different possible end users; (iii) the Respondent’s business model consisting of registering domain names incorporating common names and reselling or using them for web sites, including vanity-type e-mail web sites, has been regarded as legitimate by several WIPO Decisions; (iv) the Respondent’s rights and legitimate interests in the word “hechos” were specifically recognized in Todito.com, S.A. de C.V. v. Michele Dinoia, WIPO Case No. D2002-0620; (v) it is irrelevant that the Complainant did not authorize the use of the trademark HECHOS as it does not have exclusive rights in the common word; (vi) domain names composed of a generic word are open for registration on a first come, first served basis; (vii) the Respondent had no intent to divert consumers or to tarnish the trademark, nor has the Complainant brought any evidence in this regard; and (viii) being the Parties from different and distant countries it is not reasonable to believe that the Respondent’s activity may cause a direct damage to the Complainant.
The Respondent denies that it registered or is using the disputed domain name in bad faith since: (i) the panel in Todito.com, S.A. de C.V. v. Michele Dinoia, WIPO Case No. D2002-0620 already found that the disputed domain name was not registered and used in bad faith; (ii) the Complainant has submitted no evidence to support that the Respondent registered the disputed domain name with knowledge or constructive notice of the Complainant’s trademark and to cause confusion with the Complainant’s mark; (iii) the Respondent denies that the disputed domain name was registered with the purpose of selling, renting or otherwise transferring it to the Complainant or to a competitor for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; (iv) there is also no evidence that the Respondent registered the disputed domain name to disrupt its business, to prevent it from registering its trademark or to attract consumers seeking to purchase its products; (v) there is no evidence that the Respondent took advantage of the Complainant’s commercial interests; and (vi) there is no evidence that the Respondent chose the domain name in order to profit or otherwise abuse the Complainant’s trademarks.
6. Discussion and Findings
The Panel is required to decide the Complaint on the basis of the statements and documents submitted, and in accordance with the Policy, the Rules and any rules and principles of law that it deems appropriate.
The Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the Respondent’s domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of the domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name.
A feature of this case is that the disputed domain name has been the subject of a previous decision in Todito.com, S.A. de C.V. v. Michele Dinoia, WIPO Case No. D2002-0620. The Policy and the Rules contain no express provision relating to the effect of previous decisions on subsequent challenges to a domain name.
The practice of “refiling” a complaint – that is, where essentially the same complainant submits a second complaint involving the same domain name against the same respondent – was considered in Creo Products Inc. v. Website In Development, WIPO Case No. D2000-1490. This panel agreed with Grove Broadcasting Co. Ltd v. Telesystems Communications Limited, WIPO Case No. D2000-0703, “to the effect that there is nothing in the Uniform Policy or Uniform Rules that provides an answer to the question of whether, and if so, when, a Refiled Complaint may be entertained under the procedure for dispute resolution provided by the Uniform Policy” and stated that the issue should be resolved “by logic, by common sense and by analogy with general principles of law relating to re-litigation of cases” so that a balance is kept between “allowing for unsuccessful complainants to address injustice where appropriate, whilst providing a reasonable degree of protection to successful respondents against unsuccessful complainants opportunistically seeking readjudication of the dispute without justification”. The panel also found that those issues had to be “determined on a case-by-case basis” with the Complainant bearing “the burden of establishing that the Refiled Complaint should be entertained under the Uniform Policy”.
The general principles of law relating to re-litigation of cases include the principle of res judicata. Repeated complaints regarding the same domain name might also constitute harassment, bad faith and Reverse Domain Name Hijacking. On a practical level, the proper approach of an unsuccessful complainant is to acknowledge the limitations of the UDRP and pursue its rights in another forum.
The present case however, does not fall into the category of refiled complaints or the potential application of res judicata as described above, because as further noted below, the current Complainant is materially different from the complainant in the previous case. Dealing with a similar situation, the panel in Talal Abu-Ghazaleh International, Talal Abu Ghazaleh & Co., Abu Ghazaleh Intellectual Property and Aldar Audit Bureau v. Fadi Mahassel, WIPO Case No. D2001-0907 stated that: “The current Complainants have therefore had no opportunity to make their case under the UDNDRP… To refuse to admit the present Complaint would deprive them of their right to be heard”. Consequently, the Panel finds that the previous decision relating to the disputed domain name is not a bar to the admissibility of the present Complaint, although at the same time it is not irrelevant to the determination of this Complaint.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant owns various Mexican trademark registrations, including the registration for the word mark HECHOS referred to above.
In determining whether a disputed domain name is identical or confusingly similar to the Complainant’s trademark the relevant comparison involves the second-level portion of the domain name only (here, “hechos”). Clearly a trademark does not usually include a URL prefix (here, “www”), or a top-level domain name suffix (here, “.com”) that are functional elements of a domain name, and the comparison required for the first element of the Policy must exclude these elements. These elements are incapable of performing any distinctive function, and it is well-established that they should not be considered in making this determination (see Sidestep, Inc. v. Anna Valdieri/Marco Ferro, WIPO Case No. D2007-0212; Patricia Ann Romance Peterson, Romance Productions Ltd. v. Network Operations Center/Alberta Hot Rods, WIPO Case No. D2006-1431).
On this basis, the Panel finds that the disputed domain name is identical with the Complainant’s HECHOS trademark. Accordingly, the first element required by the Policy is satisfied.
B. Rights or Legitimate Interests
The Panel notes the following circumstances in relation to rights or legitimate interests of the Respondent in the disputed domain name: (i) the Respondent does not have any proprietary or contractual rights in any registered or common law trademark corresponding to the disputed domain name; (ii) the Respondent is not authorized or licensed by the Complainant to use the HECHOS trademark or to register and use the disputed domain name; (iii) the Respondent has not been commonly known by the disputed domain name.
The second element of the Policy requires the Complainant to prove a negative proposition (namely, that the Respondent has no rights or legitimate interests in the disputed domain name). The normal approach of complainants is to demonstrate that they do not know of any basis for rights or legitimate interests (by pointing, for example, to the respondent’s lack of any trademark, name, commercial use, etc related to the disputed domain name). In the majority of cases this approach is satisfactory to establish the respondent’s lack of rights or legitimate interests, particularly where the respondent does not defend the complaint. However, in certain circumstances the complainant must anticipate a respondent’s assertions of legitimate interests, and provide the disclosure or additional argumentation necessary to address it in the complaint. This course is forced on complainants by the unusual characteristics (in procedural terms) of paragraph 4(b) of the Policy of placing the burden of proof for a negative proposition on the complainant (the party asserting an affirmative would normally be expected to have the burden of proof), and then not providing a right of reply if the respondent subsequently asserts the affirmative proposition.
In the present case the previous decision in Todito.com, S.A. de C.V. v. Michele Dinoia, WIPO Case No. D2002-0620, put the Complainant on notice that the Respondent was likely to defend this case, and also the probable defences that would be raised. It also begged questions regarding the Complainant’s involvement in the previous proceedings, and the steps taken (or reasons no steps were taken) to challenge the Respondent’s ownership of the disputed domain name over the intervening six years. In order to establish that the Respondent has no rights or legitimate interests in the disputed domain name, it was incumbent on the Complainant to address these issues adequately.
“Hechos” is a short, common word in the Spanish language. Such a word is attractive as a domain name for this very reason, and is more likely to be registered than a distinctive or unusual word. As has been noted “When the domain name and trademark are generic-and in particular where they comprise no more than a single, short, common word-the rights/interests inquiry is more likely to favor the domain name owner.” (eResolution Case AF-0104, considering the domain <thyme.com>). In the present case the Respondent alleges that the domain name was chosen for its inherent commercial attractiveness, and its legitimate interest derives from its registration on a first come, first served basis. The Panel accepts this submission.
The fact that the disputed domain name is a short, common word simply makes more credible the Respondent’s argument that this domain name was adopted for its inherent attractiveness, and not in order to profit from the Complainant’s trademark. A complainant cannot simply rely on its trademark to trump the respondent’s registration of a short, common word for its domain name. Where a trademark owner claims rights in a short, common word then it must be vigilant in the defense of those rights, and also be prepared to point to circumstances that persuasively answer the respondent’s reliance on the inherent characteristics of the word.
The Respondent first registered the disputed domain name in 2002. The evidence suggests that the disputed domain name has not been registered to the Respondent continuously throughout this period, but the Panel finds that the registration has at all times been in the name either of an entity connected with the Respondent and probably controlled by him or in the name of the Respondent.
The complainant in the previous proceedings in Todito.com, S.A. de C.V. v. Michele Dinoia WIPO Case No. D2002-0620 was the licensee of the present Complainant. In many jurisdictions (including Mexico: see Article 140 of the Mexican Law on Industrial Property) a licensee may exercise the same actions as the owner of the mark to protect its mark rights, unless there is an agreement to the contrary. There is no evidence before the Panel regarding the terms of the relationship between the Complainant and its licensee. Also, it is not clear from the evidence whether the Complainant knew of or participated in the earlier decision, but this lacuna in the evidence cannot be interpreted in the Complainant’s favour.
Further, there is no evidence regarding other actions taken by the Complainant to assert its trademark rights or to dispute the Respondent’s domain name registration. The Complainant could have filed a UDRP proceeding addressing the evidential deficiencies identified in the earlier case without having waited six years, or otherwise asserted its rights in correspondence or by issuing proceedings in an appropriate court.
Accordingly, the Panel finds that the Complainant has known for some time and maybe for six years of the Respondent’s registration of the disputed domain name, and has not provided an adequate explanation of its seeming acquiescence in the Respondent’s continued use of the disputed domain name.
For these reasons, the Panel finds that the Complainant has failed to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Complaint is dismissed.
C. Registered and Used in Bad Faith
The Panel is not required to address this element of the Policy in light of its findings on the second element.
For all the foregoing reasons, the Complaint is denied.
David J.A. Cairns
Dated: July 29, 2008