WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Convergència Democràtica de Catalunya v. ar mas
Case No. DTV2003-0005
1. The Parties
The Complainant is Convergència Democràtica de Catalunya, Barcelona, Spain, represented by Mr. Roger Dedeu Pastor, Spain.
The Respondent is ar mas, Girona, Spain.
2. The Domain Name and Registrar
The disputed domain name <arturmas.tv> is registered with .tv Corporation International.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 30, 2003. On October 31, 2003, the Center transmitted by email to .tv Corporation International a request for registrar verification in connection with the domain name at issue. On November 11, 2003, .tv Corporation International 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. 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 on November 12, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was December 2, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on December 3, 2003.
The Center appointed Ángel García Vidal as the sole panelist in this matter on December 10, 2003. 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 the Spanish political party Convergència Democràtica de Catalunya, founded in November 17, 1974, in Barcelona and registered in February 23, 1977.
The political party Convergència Democràtica de Catalunya participates in the local and autonomous elections in the Autonomous Community of Catalunya and at national level in the legislative elections for the Spanish Parliament in Spain, and is part of a coalition with another political party named Unió Democràtica de Catalunya. The coalition is called Convergència i Unió.
The candidate of Convergència i Unió for the Autonomous community elections for year 2003 was Mr. Artur Mas. Since the year 2000, and with a view to the electoral campaign for the elections to the Autonomous Community of Catalunya, the bureau of the Convergència Democràtica de Catalunya party (with the explicit consent of the candidate Mr. Artur Mas) obtained the domain names <arturmas.com>, <arturmas.net>, <arturmas.org>, <arturmas.info>, and <arturmas.biz>, in order to promote the candidate Mr. Artur Mas on the Internet as an essential part of his electoral campaign.
On April 22, 2003, the domain name <arturmas.tv> was registered with .tv Corporation International. The registrant used a false name since "arm as" is neither a real name or surname. Furthermore, neither the street address provided in the Whois page or the telephone number exist in real life.
The domain name <arturmas.tv> is devoted basically to parody and to discredit Mr. Artur Mas.
5. Partiesí Contentions
Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is applicable to the disputed domain name.
In relation to element (i) of paragraph 4(a) of the Policy, the Complainant indicates that the Convergència Democràtica de Catalunya party whose leader is Mr. Artur Mas, requested the domain names that correspond to his name, but omitted to request the <arturmas.tv> domain name. The Complainant asserts that the party Convergència Democràtica de Catalunya has previously registered the domain names <arturmas.com>, <arturmas.net>, <arturmas.org>, <arturmas.info>, and <arturmas.biz> before the Respondent registered the <arturmas.tv> domain name. The Complainant asserts that the Respondentís intention with the acquisition of this domain name is to confuse anyone who, through a search engine seeks information about the politician Mr. Arthur Mas.
In relation to element (ii) of paragraph 4(a) of the Policy, the Complainant indicates that it is evident that the Respondent in this procedure does not have a legitime interest in the <arturmas.tv> domain name, as the registrant, using a false identity, aims to confuse persons seeking information about Mr. Artur Mas and to criticise both Mr. Mas and the political party which he represents.
Lastly, in relation to element (iii) of paragraph 4(a) of the Policy, the Complainant indicates that the domain name <arturmas.tv> has been registered and is being used in bad faith, since the registrants mere goal is to frustrate the candidacy of Mr. Artur Mas in the elections for the Presidency of the Generalitat of Catalunya, which were held in November 16, 2003.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
Under paragraph 4 of the Policy, the Complainantís burden is to prove in relation to the Complaint that:
(i) The domain name at issue is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
The Complainant must prove that each of these three elements are present in order to make out a successful case.
A. Identical or Confusingly Similar
The Policy is based on the Report of the WIPO Internet Domain Name Process of April 30, 1999. This Report, at paragraphs 164-168, states as follows (emphasis added and footnotes deleted):
"164. The views of commentators on the desirable scope of the administrative procedure were divided. Certain commentators favored the broad approach of opening the procedure to any intellectual property dispute with respect to a domain name registration. In general, they favored the development of a body of administrative law that would, through the procedure, provide an effective international enforcement mechanism for intellectual property rights as an alternative to expensive and time-consuming multijurisdictional litigation.
165. The preponderance of views, however, was in favor of restricting the scope of the procedure, at least initially, in order to deal first with the most offensive forms of predatory practices and to establish the procedure on a sound footing. Two limitations on the scope of the procedure were, as indicated above, favored by these commentators.
166. The first limitation would confine the availability of the procedure to cases of deliberate, bad faith abusive registrations. [Ö]
167. The second limitation would define abusive registration by reference only to trademarks and service marks. Thus, registrations that violate trade names, geographical indications or personality rights would not be considered to fall within the definition of abusive registration for the purposes of the administrative procedure. Those in favor of this form of limitation pointed out that the violation of trademarks (and service marks) was the most common form of abuse and that the law with respect to trade names, geographical indications and personality rights is less evenly harmonized throughout the world, although international norms do exist requiring the protection of trade names and geographical indications.
168. We are persuaded by the wisdom of proceeding firmly but cautiously and of tackling, at the first stage, problems which all agree require a solution."
It is clear from this Report that personality rights were not intended to be made subject to the proposed dispute resolution procedure. In adopting the procedure proposed in the WIPO Report, ICANN did not vary this limitation on its application. It must be concluded, therefore, that ICANN did not intend the Policy to apply to personality rights.
The Final Report on the Second WIPO Domain Name Process, dated September 3, 2001, ("Second WIPO Report"), confirms this conclusion. In this Report, WIPO carefully considered to what degree protection should be extended to personal names. In its recommendations, WIPO clearly indicated that the Policy should be limited to personal names that were commercially exploited by their holders. The Second WIPO Report states as follows:
"199. It is clear that many sensitivities are offended by the unauthorized registration of personal names as domain names. It is clear also that the UDRP does not provide solace for all those offended sensitivities, nor was it intended to do so, as originally designed. The result is that there are some perceived injustices. Persons who have gained eminence and respect, but who have not profited from their reputation in commerce, may not avail themselves of the UDRP to protect their personal names against parasitic registrations. The UDRP is thus perceived by some as implementing an excessively materialistic conception of contribution to society. Furthermore, persons whose names have become distinctive in countries that do not recognize unregistered trademark rights are unlikely to find consolation in the UDRP in respect of bad faith registration and use of their personal names as domain names in those countries.
200. Nevertheless, we believe that the views expressed by the majority of commentators against the modification of the UDRP to meet these perceived injustices are convincing at this stage of the evolution of the DNS and the UDRP."
There are a number of cases under the Policy in which the complainant has successfully based a complaint on the complainantís personal name. In some of these cases the personal name was registered as a trademark (e.g. Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847). In other cases the complainant, as a famous or at least widely known person, has unregistered trademark or service mark rights. Panels have noted that common law trademark rights exist under United States trademark law or under other national trademark laws, which is sufficient for the purposes of paragraph 4(a)(i) of the Policy (Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210; Cho Yong Pil v. ImageLand, Inc., WIPO Case No. D2000-0229; Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235; Hunton & Williams v. American Distribution Systems, Inc. et al., WIPO Case No. D2000-0501; Daniel C. Marino, Jr. v. Video Images Productions, et al., WIPO Case No. D2000-0598). In these cases the Complainant proved that the personal name in question was used as a marketable commodity, allowing his or her name to be used for a fee, to promote someone elseís goods or services, or for direct commercial purposes in the marketing of his or her own goods and services.
This Panel agrees with decisions in which prior Panels have recognized the right of a Complainant to claim a common law mark where there is no registered trademark. Nevertheless, in the present case, the Complainant is not the owner of a trademark or service mark registration for the words "Artur Mas", nor can these words neither be treated as an unregistered trademark or service mark. Under the Spanish Trademark Law of 2001 (Ley 17/2001, de 7 de diciembre, de Marcas) the personal name can be protected as an unregistered trademark when the name is used as a mark to distinguish goods or services, and reaches the status of well-known mark (marca notoriamente conocida) in the sense of the article 6 bis of the Paris Convention [see articles 6.2 d and 34.5 of the Spanish Trademark Law]. However, in this case the Complainant has not proved the use of the name "Artur Mas" as a trademark or service mark for the purpose of the merchandising or other commercial promotion of goods or services. On the contrary, the name "Artur Mas" is used in a political context, but not in commerce to distinguish goods or services. (In a similar vein, see The Reverend Dr. Jerry Falwell and The Liberty Alliance v. Gary Cohn, Prolife.net, and God.info, WIPO Case No. D2002-0184, where the Panel denied the complaint of the Reverend Jerry Falwell, a well-known preacher in the United States. The Panel held that, well-known and all as he was, Mr. Falwell had failed to show that his name had been used in a trademark sense as a label for particular goods and services. He failed to provide any marketing brochures, trade advertisements or other evidence of use of his name as a mark. See also Israel Harold Asper v. Communication X Inc, WIPO Case No. D2001-0540, where the Panel held that the Complainant, a prominent Canadian businessman and philanthropist, had not shown that he had used his personal name for the purpose of merchandising or for any other commercial promotion of goods or services.)
In order to prove that the domain name at issue is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, the Complainant points out that the registration of the Complainantís domain names (<arturmas.com>, <arturmas.net>, <arturmas.org>, <arturmas.info>, and <arturmas.biz>) precedes the registration of the Respondentís domain name <arturmas.tv>. Nevertheless, paragraph 4(a)(i) of the Policy states that the Complainant must have rights in a trademark or service mark. Possession of one or more domain names does not as such meet this requirement.
Therefore, the Complainant has not proved the first of the conditions stated in paragraph 4(a)(i) of the Policy.
In connection with criteria 2 and 3 under paragraph 4(a)(ii) and (iii), the Panel notes, inter alia, that the Respondent has not provided any explanation in this case and that the Respondent has supplied a false name and an incorrect contact information when registering the domain name. A number of prior Panels have found that deliberately furnishing false contact information to a disputed domain name registrar can constitute bad faith in registration and use. (See, for example, Home Director, Inc. v. HomeDirector, WIPO Case No. D2000-0111; Verio Inc. v. Sunshinehh, WIPO Case No. D2003-0255; Grupo Televisa, S.A., de C.V et al. v. Autosya S.A. de C.V., et al., WIPO Case No. DTV2001-0007).
Even so, whatever may be the situation with regard to elements (ii) and (iii) of the paragraph 4(a) of the Policy, the Complainant has not proved the first of the elements stated in paragraph 4(a) of the Policy. The Complainant has failed to prove that it is the owner of a trademark or service mark (registered or not) formed by the words "Artur Mas". This Panel has no doubt that Mr. Artur Mas is a famous Spanish politician, but the Policy and Rules which bind this Panel do not allow to rule that the domain name <arturmas.tv> be transferred to the Complainant.
For the foregoing reasons, the Complaint is denied.
Ángel García Vidal
Dated: December 19, 2003