WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Digital Ground LLC v. Franco Chile Aravena
Case No. D2012-1957
1. The Parties
Complainant is Digital Ground LLC of Willmington, Delaware, United States of America, represented by Javier J. Florentin, Argentina.
Respondent is Franco Chile Aravena of Santiago, Chile.
2. The Domain Names and Registrar
The disputed domain names are <taringadescargas.com>, <taringamusica.com>, <taringamusicagratis.com>, <taringapeliculas.com> and <xtaringa.com> which are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed in Spanish with the WIPO Arbitration and Mediation Center (the “Center”) on October 3, 2012. On October 4, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 5, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On October 12, 2012, the Center communicated to the parties that the language of the registration agreement was English. On October 15, 2012, Complainant filed the Complaint in English. Respondent did not submit any comments.
On October 15, 2012, after having reviewed the Complaint, as required by Paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) and Paragraph 5 of the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”), the Center sent an email communication to Complainant inviting it to remedy several deficiencies found in the Complaint (including, among others, lack of grounds required under subparagraphs (2) and (3) of paragraph 3(b)(ix) of the Rules). Complainant filed an amended Complaint on October 20, 2012, and subsequently amended and/or remedied other administrative deficiencies on October 26, November 6, November 7, November 8 and November 9, 2012.
The Center verified that the Complaint, as amended, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules and the Supplemental Rules.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 12, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 2, 2012. The Center received informal email communications allegedly from Respondent on November 28, November 30, December 1 and December 3, 2012. Respondent did not submit any formal response. Accordingly, the Center notified the parties about the commencement of the panel appointment process on December 3, 2012.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on December 13, 2012. This Panel finds that it was properly constituted. This 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 December 21, 2012, the Center communicated to the parties Procedural Order No. 1. In such Procedural Order this Panel set forth January 11, 2013, as the deadline to forward his decision to the Center. On December 27, 2012, Complainant filed with the Center its reply to Procedural Order No. 1. The Center received no filing from Respondent.
A) Preliminary matters
The original Complaint was filed in Spanish and Complainant stated therein that Spanish was the language of the registration agreement. However, the Registrar’s verification response to the Center stated that English was the language of the corresponding registration agreements. Communications from the Center to the parties were afterwards made in both English and Spanish. In response to the Center’s email communication of October 12, 2012, Complainant submitted the Complaint in English on October 15, 2012. By email communication to the Center of October 20, 2012, Complainant requested the resolution be issued in Spanish, and by email communication to the Center of October 26, 2012, Complainant requested that English be the language of this administrative proceeding. Pursuant to paragraph 11 of the Rules, this Panel concurs that English be the language of this administrative proceeding (for the avoidance of doubt, this Panel clarifies that language of the administrative proceeding includes the language of the administrative decision under such proceeding).
The Center received several email communications from an email address substantially similar to that reported for Respondent, the sender identifying himself as Franco Salsedo, where he claimed to be just the administrator of the disputed domain names and stated that his client would like an amicable solution and negotiation. Even though such email communications were filed with the Center within the timeframe set forth in the Rules to submit a response, they cannot be deemed as a response since (i) they do not comply with the requirements set forth in the Rules, paragraph 5(b) and (ii) the sender of such emails never claimed to be the registrant or owner of the disputed domain names but rather just their administrator. Thus this Panel has decided not to take into account such email communications1. In any event, the outcome of this proceeding would have not changed if this Panel had taken into account those email communications.
4. Factual Background
Complainant has rights over (i) the TARINGA trademark, for which on January 17, 2012, it applied for the assignment of the trademark registration No. 2254206 of October 14, 2008 (application No. 2717042 of November 29, 2006) with the National Institute of Industrial Property of Argentina, class 35; and (ii) the TARINGA! INTELIGENCIA COLECTIVA and design trademark, registration No. 2326072 of November 6, 2009 (application No. 2874861 of November 12, 2008) with the National Institute of Industrial Property of Argentina, class 16.
The disputed domain names were created on July 10, 2009, except for <taringamusicagratis.com> which was created on March 31, 2011.
5. Parties’ Contentions
Complainant’s assertions are as follows:
Complainant owns the TARINGA mark in Argentina as well as the domain names <taringa.com>, <taringa.net> and others.
Taringa! is a virtual community with more than 70 million active users. In 240, alexa.com ranking. Also offers streaming music (taringa.net/musica/), online games (taringa.net/juegos/) and general interest articles (taringa.net/).
The disputed domain names are identical to Complainant’s marks creating confusion about the brand, products and services on which Complainant has rights. Respondent has used part of the logo of the brand in the disputed domain name <taringamusica.com> (Taringa!) and other sites that were removed from line.
Using these methodologies, Respondent is creating confusion about the brand and service that presents <taringa.net>. Respondent has no right on the mark TARINGA, submitted documentation shows Respondent’s intention of misusing the disputed domain names.
The <taringa.net> WhoIs shows Complainant’s email for the responsible and administrative contacts.
Complainant requests that the disputed domain names be transferred to Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
The lack of response from Respondent does not automatically result in a favorable decision for Complainant2. The burden for Complainant, under paragraph 4(a) of the Policy, is to show:3 (i) that each disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that Respondent has no rights or legitimate interests in respect of each disputed domain name; and (iii) each disputed domain name has been registered and is being used in bad faith.
In examining the entire file of this matter, it seems to this Panel that Complainant is not versed at all in domain name disputes and did not have legal counsel at its side. Notwithstanding that the Center warned Complainant on the lack of grounds in the Complaint, required under subparagraphs (2) and (3) of paragraph 3(b)(ix) of the Rules, Complainant did not submit anything new. In spite of the above, this Panel decided to issue Procedural Order No. 1 referred to in section 3 above, whereby this Panel invited (i) Complainant to file (a) any appropriate evidence supporting that Complainant owns the trademark registration for TARINGA with the National Institute of Industrial Property of Argentina, No. 2717042, class 35, since such trademark registration still is in the name of a third party; (b) any appropriate evidence supporting that Complainant owns the domain names <taringa.com> and <taringa.net> as claimed in the Complaint; (c) any appropriate arguments and supporting evidence on why it should be deemed that Respondent has no rights or legitimate interests in respect of each of the disputed domain names; and (d) any appropriate arguments and supporting evidence on why it should be deemed that each of the disputed domain names has been registered and is being used in bad faith, and (ii) Respondent to file any appropriate arguments and supporting evidence in connection only with Complainant’s filing, if any. Complainant’s response to such Procedural Order added nothing substantial to the Complaint.
It is clear to this Panel that Complainant used the WIPO UDRP model complaint to prepare the Complaint. However, it seems to this Panel that Complainant did not comprehend the purpose of, and guidelines to complete, such model complaint. Such model complaint, which is publicly available at the WIPO web site, is just that, a template aimed to provide some basic initial guidance to parties interested in filing a complaint. In any event and for the sake of doubt, this Panel points out that although the Center sometimes provides certain procedural information to either party in the fulfillment of mere administrative requirements, it is not the Center’s role to act as legal counsel to any of the parties in these administrative proceedings, which the Center has also pointed out. Further, as set forth in other UDRP cases, this Panel reiterates that it is Complainant’s responsibility to present its case with appropriate arguments and evidence and that it is not this Panel’s role to ellaborate arguments on behalf of any party or to look for evidence not supplied by the parties.4
A. Identical or Confusingly Similar
It is undisputed that Complainant has rights in the TARINGA! INTELIGENCIA COLECTIVA and design mark and the TARINGA mark.
All the disputed domain names entirely incorporate the TARINGA mark, albeit with other characters. The addition of such other characters is not enough to avoid similarity, nor does it add anything to avoid confusion with the TARINGA mark, which appears to be the central element in the disputed domain names. Prior UDRP panel decisions support this Panel’s view (see Nokia Corporation v. Nokiagirls.com a.k.a. IBCC, WIPO Case No. D2000-0102; LEGO Juris A/S v. Masayuki Sato, WIPO Case No. D2011-1639).
Therefore, this Panel finds that each disputed domain name is confusingly similar to the TARINGA mark.
B. Rights or Legitimate Interests
Complainant’s arguments and evidence on this point are plainly weak.
From the very limited information available on the file of this case, it seems that (i) the website associated to the disputed domain name <taringamusica.com> offers music downloading, while (ii) the website associated to <taringa.net> is a blog site which Complainant claims also offers music streaming (screenshots of both web sites attached to the Complaint). Complainant claimed to be the owner of the domain names <taringa.com> and <taringa.net>, and submitted that the website under the disputed domain name <taringamusica.com> shows part of Complainant’s logo (Taringa!).
Notwithstanding Procedural Order No. 1, Complainant did not submit appropriate evidence to show it is the registrant/owner of the domain names <taringa.com> and <taringa.net>. Rather it simply provided a copy of the WhoIs report for <taringa.net> and pointed out that the email address for such domain name is the same email address used by Complainant in this administrative proceeding. Although the email addresses are the same, such WhoIs report does not show Complainant’s name as the registrant (or other type of contact), shows telephone numbers different to those provided by Complainant in this administrative proceeding and also shows a street address at Montevideo, Uruguay, which is different to the address provided by Complainant in this administrative proceeding. Further, Complainant did not provide any information on the domain name <taringa.com> and, due to such lack of submission, in this particular case this Panel decided to make a WhoIs search for <taringa.com> and found that the registrant of record appears to be a third party.5
Overall, this Panel is not convinced that Complainant has established prima facie that Respondent has no rights or legitimate interests in each of the disputed domain names.
C. Registered and Used in Bad Faith
Given this Panel’s finding under the rights or legitimate interests requirement, this Panel considers it unnecessary to determine whether Complainant might have succeeded under this heading. Nevertheless, this Panel points out that under this heading Complainant simply repeated the argument that “Using these methodologies, the Respondent is creating confusion about the brand and service that presents taringa.net”. Other than that, Complainant presented no arguments and evidence at all on why it should be deemed that each of the disputed domain names has been registered and is being used in bad faith.
The issue of bad faith has to be clearly supported by appropriate argument and evidence.6 Here there is no appropriate argument nor evidence.
For the foregoing reasons, the Complaint is denied.
Date: January 11, 2013
2 See Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465, where it is established: “the panel finds that as a result of the default, Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by Complainant. The panel does not, however, draw any inferences from the default other than those that have been established or can fairly be inferred from the facts presented by Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence”.
3 See Koninklijke Philips Electronics N.V. v. Relson Limited, WIPO Case No. DWS2001-0003: “Each of the three stated elements are made up of a number of facts, each of which has to be proven in order for the Complainant to succeed [...] Facts are proven through evidence [...] Mere “assertions” are nothing more than argument and must in each case be based on facts proved through evidence”.
4 See The Skin Store, Inc. v. eSkinStore.com, WIPO Case No. D2004-0661; Priority Management Systems, Inc. v. C.E.O. Mentor Pty Ltd, WIPO Case No. D2000-1522; Marvel Characters, Inc. v. Familia Martínez Veliz, WIPO Case No. DMX2012-0007.
5 On-line search made on January 9, 2013, shows Ludeter SA as the registrant. See Sensis Pty Ltd., Telstra Corporation Limited v. Yellow Page Marketing B.V., WIPO Case No. D2011-0057: “UDRP panels frequently avail themselves of resources not supplied or mentioned by the parties, when these are publicly available and have a high degree of credibility for a relevant purpose [...] such resources may include the [...] domain name registrars’ WhoIs databases [...] The panel will use these resources, for example, to [...] fill in the factual gaps left by a silent respondent, or test the credibility and completeness of the parties’ statements”.
6 See Enrique Bernat F., SA v. Marrodan, WIPO Case No. D2000-0966: “The burden of proof lies with the Complainant in all cases to establish actual bad faith by the Respondent. There is no obligation whatsoever on the Respondent to prove good faith, and in any event it is equally important to note that the absence of good faith does not constitute bad faith”. See also 2Advanced Studios LLC v. Dreamrack, Inc., WIPO Case No. D2003-0923.