WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

TV Azteca, S.A.B. de C.V. v. Spiral Matrix

Case No. D2011-0008

1. The Parties

The Complainant is TV Azteca, S.A.B. de C.V. of Mexico City, Mexico represented by Arochi, Marroquin & Lindner, S.C. of Mexico.

The Respondent is Spiral Matrix of Eldoret, Kenya.

2. The Domain Name and Registrar

The disputed domain name <aztecanoticias.com> is registered with Intercosmos Media Group d/b/a directNIC.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 4, 2011. On January 5, 2011, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com. a request for registrar verification in connection with the disputed domain name. On January 5, 2011, Intercosmos Media Group d/b/a directNIC.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” or “UDRP”), 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 January 11, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 31, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 3, 2011.

The Center appointed Andrew Brown as the sole panelist in this matter on February 14, 2011. 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 is a television company established in 1993 after the privatisation of the “Imevision” network. It has two national networks one of which has 90 channels (Canal 13, known as Azteca 13 or Azteca Trece) and another with 78 channels (Canal 7, known as Azteca 7 or Azteca Siete). The Complainant’s channel Azteca 13 is also broadcast to the international market via Azteca Internacional which consists of:

(a) Azteca America for the United States;

(b) Azteca Internacional for:

(i) Spain;

(ii) Canada;

(iii) Latin America.

The Complainant produces a number of programmes including news (“noticias”), reality shows, sports transmissions, musical shows, game shows, talk shows and variety shows.

The Complainant holds a number of trademarks for AZTECA and variations of this mark (“house marks”) in Mexico. Examples of the registered trademarks which the Complainant supplied to the Panel include the following:

The above trademarks were all registered prior to the registration of the disputed domain name on February 21, 2006.

Most relevantly, for the last 16 years, the Complainant has also been using the trademark AZTECA NOTICIAS in Mexico as well as the United States, Canada, Spain and Latin America (although the Complainant had not filed a trademark application prior to the Respondent registering the disputed domain name). Azteca Noticias is the division of the Complainant that produces news programmes for TV Azteca including nightly prime-time newscasts.

Prior to the date of registration of the domain name, the Complainant had also registered the following domain names:

<aztecainteractive.com>

<aztecainternet.com>

<aztecatv.com>

<tvazteca.com.mx>

<tvazteca.com>

<tvazteca.info>

5. Parties’ Contentions

A. Complainant

In support of the factual position above, and to establish under paragraph 4(a)(i) that it has rights in the above trademarks, the Complainant has provided with its Complaint trademark registration certificates from Mexico for its trademark AZTECA and the various AZTECA house marks for specifications including telecommunications and entertainment services. In support of its rights in the disputed domain name, the Complainant also relies on a number of domain name registrations including those listed above.

In addition to its rights in the trademark AZTECA and the AZTECA house marks, the Complainant asserts that it has been using the mark AZTECA NOTICIAS both in Mexico and abroad for over 16 years.

The Complainant submits that the disputed domain name is identical or confusingly similar to all of the above marks.

As to the position of the Respondent and whether, under paragraph 4(a)(ii) of the Policy, it has rights in the domain name, the Complainant submits that the Respondent has no rights or legitimate interests in respect of the domain name. In support of this submission, the Complainant relies on a Google search result which evidences no match between the Respondent and the trademark AZTECA NOTICIAS.

Furthermore, the Complainant relies on the fact that the Respondent has not sought to apply for, or register, the trademark AZTECA NOTICIAS in either Mexico or the United States of America.

The Complainant also submits that there is no evidence that the Respondent has used the domain name in connection with a bona fide offering of goods and services. The URL address for the domain name currently redirects a website user to a homepage of the Registrar’s website. Relying on searches at the “www.archive.org” website, the Complainant submits that the Respondent has never used the domain name in an “active” way and therefore the respondent is passively holding the domain name.

As to paragraph 4(a)(iii) of the Policy, i.e. whether the domain name was registered and has been used in bad faith, the Complainant submits that it has been operating in Mexico and internationally for over 16 years. It relies on the fact that it is one of the most important telecommunication and entertainment companies in Mexico and asserts that its trademark AZTECA NOTICIAS is one of its most important and well-known marks having been used in Mexico and internationally for the last 16 years.

The Complainant relies on the decision of Société Air France v. Kim Hyungho, WIPO Case No. D2005-0442, in support of the contention that it is unlikely that the Respondent, at the time it registered the domain name, was unaware that it was infringing the Complainant’s trademark.

As to use in bad faith, the Complainant relies on the passive holding doctrine and cited a number of panel decisions in support.

The Complainant also relies in support of its claim of registration and use in bad faith that the Respondent has been the subject of at least 40 other cases under the UDRP where the Respondent was ordered to transfer the disputed domain name to the concerned complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that:

(i) the domain name registered by the Respondent 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 interest in respect of the domain name in question; and

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

A. Identical or Confusingly Similar

The Complainant has provided clear evidence of its rights in the distinctive registered trade mark AZTECA and also a number of other registered trademarks for AZTECA house marks. All of these rights were obtained prior to registration of the disputed domain name on February 21, 2006.

AZTECA is a distinctive mark and the Complainant has demonstrated very substantial and significant use of it. It is well recognised that the creation of rights in a mark can be particularly effective when undertaken by television. In this case the mark has been used for television channels themselves and the Panel finds that use of AZTECA and the AZTECA house marks on television created a substantial reputation alongside the registered trademarks. These rights have been shown to exist not only in Mexico but also in the United States, Canada, Spain and Latin America.

As to AZTECA NOTICIAS, the Panel is satisfied the Complainant has rights in this unregistered mark as at February 21, 2006. The Complainant has shown that it has been using the mark both in Mexico and internationally for at least 11 years prior to registration of the disputed domain name.

For these reasons the Panel finds that the Complainant has established its case under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The burden is on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the disputed domain name. The Panel is satisfied that the Complainant has established a prima facie case in this regard. Google searches of the Respondent and the mark AZTECA NOTICIAS present no search results. Furthermore, in Mexico or the United States at least, the Respondent has not sought to register the trademark AZTECA NOTICIAS nor has it sought to put the domain name to use for any goods or services.

Once the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, the burden is on the Respondent to rebut that case. Here there has been no Response from the Respondent and the Panel is entitled to draw inferences from that.

The Panel finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy and that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Before dealing with this item the Panel notes that the disputed domain name was registered well over five years prior to the Complaint being lodged. No explanation is provided in the Complaint as to why the Complainant took so long to file a Complaint.

The Panel is satisfied however that this is not a disqualifying factor. The consensus of panel decisions is that a delay in bringing a complaint is not per se disqualifying and does not per se provide a defence under the Policy. See Tax Analysts v. eCorp, WIPO Case No. D2007-0040; The E. W Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447; The Jennifer Lopez Foundation v. Jeremiah Tieman, Jennifer Lopez Net, Jennifer Lopez, Vaca Systems LLC, WIPO Case No. D2009-0057, referring also to The Hebrew University of Jerusalem v. Alberta Hot Rods, WIPO Case No. D2002-0616 and Tom Cruise v. Network Operations Center / Alberta Hot Rods, WIPO Case No. D2006-0560. For this reason and in the absence of any response from the Respondent, the delay is not material.

The third and final requirement which the Complainant must meet is to prove that the disputed domain name was registered and has been used in bad faith.

In this regard the Complainant argues that TV AZTECA is one of the major and most important telecommunications and entertainment companies in Mexico. Further, it relies on the fact that AZTECA NOTICIAS is one of its most important and well-known marks internationally. The Complainant has argued that it is unlikely that the Respondent at the time of registration of the disputed domain name or thereafter was not aware that it was infringing the Complainant’s trade mark.

The Panel finds that the requirement of proving registration and bad faith is satisfied here. As noted earlier, AZTECA is a distinctive mark which had achieved substantial reputation prior to 2006. The exact combination of AZTECA NOTICIAS is also one with a substantial history of use prior to that date. In these circumstances and in the absence of any Response, the Panel is prepared to find that the Respondent did register the domain name in bad faith. It is reasonable to infer from the strength of the Complainant’s rights, the distinctive nature of the mark AZTECA and in the absence of a Response from the Respondent, that the Respondent must have been aware of the Complainant’s marks and registered the disputed domain name with an intent to unfairly exploit that mark.

Furthermore, the Panel is also satisfied that the disputed domain name was registered and is being used in bad faith under paragraph 4(b)(ii) of the Policy. The Complainant has drawn the Panel’s attention to at least 40 earlier decisions under the UDRP where the Respondent registered a domain name and was subsequently ordered to transfer it to a complainant. The pattern of conduct proviso at paragraph 4(b)(ii) of the Policy may be satisfied by showing that a respondent has registered multiple domain names directly against multiple complainants: Telstra Corporation Limited v. Ozurls WIPO Case No. D2001-0046. Certainly such a pattern of conduct is established here. Further, having found that the Complainant had rights in an identical and confusingly similar mark both in Mexico and internationally and, in the absence of any evidence from the Respondent, the Panel finds that the domain name was registered and is being used in order to prevent the Complainant from registering its trademark AZTECA NOTICIAS in a corresponding domain name.

As to use in bad faith , the Complainant relies on the passive holding doctrine as evidenced by a number of previous panel decisions including Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

The Panel finds that the Respondent is using the domain name in bad faith by its passive holding of the disputed domain name since February 21, 2006: Telstra Corporation Ltd v Nuclear Marshmallows supra; Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131. The panels, in those cases, held that a remedy can be obtained under the Policy only if the circumstances surrounding the use of the domain name show that the respondent’s passive holding amounts to acting in bad faith.

Factors taken into account in Ladbroke supra to show that the Respondent was using the domain name in bad faith, and which apply equally in respect of the Respondent’s registration of the disputed domain name in this case are:

1. The Complainant has established a prima facie case that the Respondent registered the disputed domain name in bad faith.

2. On the balance of probabilities, at the time of registration, the Respondent was aware that the Complainant had established an international reputation in the trademark AZTECA NOTICIAS and similar trademarks to the disputed domain name.

3. Any attempt to actively use the disputed domain name would inevitably lead to a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website amongst users of the website who would inevitably be led to believe that the disputed domain name was owned, controlled, established or in some way associated with the Complainant.

4. The Respondent has passively held the disputed domain name in that it has failed in the almost five years since it registered the disputed domain name to construct a website and the disputed domain name merely redirects to the homepage of the registrar Directnic Limited.

5. There is no information as to the business activities of the Respondent and the Complainant has made out a prima facie case that the Respondent does not have any rights or legitimate interests in the identical or confusingly similar marks.

6. The Respondent has failed to file a Response or make any attempts to answer the assertions made by the Complainant.

Accordingly, the Panel finds that the passive holding of the disputed domain name is use of the domain name in bad faith.

7. Decision

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 <aztecanoticias.com> be transferred to the Complainant.

Andrew Brown QC
Sole Panelist
Dated: February 23, 2011