WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
C.A. Editora El Nacional v. Lin ZanSong
Case No. D2014-0110
1. The Parties
Complainant is C.A. Editora El Nacional of Caracas, the Bolivarian Republic of Venezuela, represented by VANRELL IP, Uruguay.
Respondent is Lin ZanSong of Yueqing, Zhejiang Province, China.
2. The Domain Name and Registrar
The disputed domain name <elnacional.com> (the “Disputed Domain Name”) is registered with 35 Technology Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 23, 2014. On January 24, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 26, 2014, the Registrar transmitted by email to the Center its verification response confirming that 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, Complainant filed an amendment to the Complaint on January 31, 2014.
On January 27, 2014, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On January 30, 2014, Complainant requested that English be the language of the proceeding. On February 1, 2014, Respondent requested that Chinese be the language of the proceeding.
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” 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 Respondent of the Complaint in both Chinese and English, and the proceeding commenced on February 5, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 25, 2014.
On February 25, 2014, Respondent requested to extend the Response due date by two weeks. On the same day, the Center invited Complainant to comment on Respondent’s extension request. On February 26, 2014, the Center received the comment from Complainant objecting to Respondent’s extension request.
On February 25, 2014, Respondent requested the Center to allow him to file a Response after the Panel had decided the language of the proceeding. On the same day, the Center acknowledged these email communications from Respondent, reiterated that given the provided submissions and circumstances of this case, the Center would accept a Response in either English or Chinese and appoint a Panel familiar with both languages mentioned above, if available. The Center also informed Respondent that his email communications would be included in the case file for the Panel’s consideration. The Response was filed with the Center February 25, 2014 in Chinese. On February 27, 2014, the Center informed the parties that it would now proceed with the appointment of the Panel.
The Center appointed Kimberley Chen Nobles, Felipe Claro and Yong Li as panelists in this matter on March 26, 2014. The Panel finds that it was properly constituted. Each member of 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
Complainant, C.A. Editora El Nacional is a Venezuelan publishing company, most famous in Venezuela for its well-known newspaper El Nacional. Complainant bases its Complaint on its ownership of a portfolio of registered trademarks for the term EL NACIONAL (“EL NACIONAL Marks”). Complainant has provided copies of several of its trademark registrations in Annex III to the Complaint. These trademarks include:
- Word mark for EL NACIONAL, Reg. No. F060558, granted on October 6, 1970 in class 38.
- Design mark for EL NACIONAL.COM, Reg. No. 21.659-S, granted on February 27, 2003, in class 38.
- Design mark for EL NACIONAL.COM, Reg. No. 21.660-S, granted on February 27, 2003, in class 38.
- Design mark for EL NACIONAL.COM, Reg. No. 21.665-S, granted on February 27, 2003, in class 38.
- Design mark for EL NACIONAL.COM, Reg. No. 21.664-S, granted on February 27, 2003, in class 35.
Complainant also operates a website featuring the e-version of the El Nacional newspaper at the domain name <el-nacional.com>, registered on July 30, 1996.
Respondent is Lin ZanSong of Yueqing, Zhejiang Province, China. The Disputed Domain Name <elnacional.com> was registered on September 5, 2001.
5. Parties’ Contentions
Complainant asserts that the Disputed Domain Name is identical to Complainant’s EL NACIONAL Marks, that Respondent has no rights to or legitimate interests in the Disputed Domain Name, and that Respondent registered and is using the Disputed Domain Name in bad faith.
Respondent asserts that “El Nacional” is common Spanish vocabulary and that Complainant’s trademark rights in EL NACIONAL have expired. Respondent also asserts that he has rights or legitimate interests in the Disputed Domain Name, because before being notified of the domain name dispute, he had used or was ready to use it for legitimate commodity or service. Finally, Respondent also asserts that he did not register and use the Disputed Domain Name in bad faith.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
A. Preliminary Matters
Language of the Proceeding
Complainant has requested that, despite Spanish being the language of the Complainant and Chinese being the language of the Respondent, English should be recognized as the language of the proceeding. Complainant bases its request on the assertion that English is a global language accessible worldwide, that Respondent appears to understand English as Respondent sent an email in English to Complainant related to Respondent’s use of the Disputed Domain Name, and that Respondent has already been involved in previous UDRP proceedings which were conducted in English. (See Janel, S.A. de C.V. v. Lin ZanSong, Case No. D2010-0755). The Panel notes that a Chinese translation of the complaint was provided to Respondent in the aforementioned proceeding, and that Respondent did not file a response.
Respondent has requested that Chinese should be the language of the proceeding. Respondent bases his request mainly on the assertions: a) Respondent is a Chinese; b) the Registrar is a Chinese entity; c) with the assistance of other people, Respondent emailed Complainant in English after commencement of the proceeding; and d) in the previous proceeding where Respondent was involved, the panel requested complainant to provide a translation of the complaint into Chinese.
Based on Complainant’s assertions, it appears the Respondent can understand English, thus English is a common language. Further, the registration of the Disputed Domain Name used the Latin characters in the EL NACIONAL Marks. Lastly, Respondent had made his arguments in the language of his choosing and will not be prejudiced by this Decision issuing in English. Thus, the Panel concludes that English should be the language of the proceeding.
B. Identical or Confusingly Similar
To prove this element, Complainant must have trademark rights and the Disputed Domain Name must be identical or confusingly similar to Complainant’s trademark.
It is clear that Complainant has rights in the EL NACIONAL Marks and that the EL NACIONAL Marks are well-known by the Venezuelan public as indicating the El Nacional newspaper. The El Nacional newspaper is one the most widely read and circulated daily national newspapers in Venezuela, with an average of more than 80,000 papers distributed daily and 170,000 copies on weekends. Complainant offers an e-version of its well-known newspaper at its website <www.el-nacional.com>. Complainant’s website is the first result in Google searches for the terms “El Nacional” and “ELNACIONAL”. Further, as discussed above, the record shows Complainant owned trademark rights in the EL NACIONAL Marks and had registered its own domain name long before the Disputed Domain Name registration. Moreover, the evidence filed by Complainant clearly shows that its registration for the word mark EL NACIONAL (Reg. No. F060558, granted on October 6, 1970 in class 38) was duly renewed on August 18, 2000 and June 3, 2010, and is therefore still valid.
Respondent contends that “El Nacional” is common Spanish vocabulary and that, when registering the Disputed Domain Name, Respondent only used it as a Spanish word for a Spanish oriented domain name. However, Respondent’s argument that “El Nacional” is merely common Spanish vocabulary is unpersuasive. While it is true that the word “nacional” is of common use in Spanish language, the combination of the article “el” plus another word (in this case, “nacional”) is particularly well-known in Latin America as identifying a newspaper. There are many examples of the use of “el” plus “word” to distinguish different well-known newspapers across Latin America. (See, e.g., “http://libguides.mit.edu/content.php?pid=146063&sid=1247903, last visited April 4, 2014”.) The words“ Comercio”, “Mercantil”, “Regional”, “Austral”, “Ciudadano”, “Independiente” are all common use in the Spanish language. However, when combined with the prefix “el”, all of them refer to Latin American newspapers. (See id)
The Disputed Domain Name incorporates the EL NACIONAL Mark in its entirety. “In most cases where a domain name incorporates the entirety of a trademark, then the domain name will for the purposes of the Policy be confusingly similar to that mark.” Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227. The Disputed Domain Name <elnacional.com> simply removes the space from Complainant’s EL NACIONAL Mark or removes the hyphen from Complainant’s registered domain name <el-nacional.com>. Respondent contends that the space between the words “El” and “Nacional” in Complainant’s marks is obvious and that Complainant’s registration of <el-nacional.com> indicated that Complainant chose only that variation of its marks for a domain name. This is not persuasive. Previous UDRP panels have accepted that “[g]enerally, a user of a mark ‘may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or nondistinctive matter to it.’” J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23: 50 (4th ed. 1998) cited in Pfizer Inc. v. United Pharmacy Ltd., WIPO Case No. D2001-0446. See also Telstra Corporation Limited v. Barry Cheng Kwok Chu, WIPO Case No. D2000-0423.
It is therefore likely that consumers would be confused by the use of the trademark in the Disputed Domain Name. In light of the foregoing, the Panel finds that the Disputed Domain Name is confusingly similar to Complainant’s registered mark and that paragraph 4(a)(i) of the Policy is satisfied.
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
C. Rights or Legitimate Interests
Complaint asserts that Respondent has no rights or legitimate interests in the Disputed Domain Name. Respondent disputes this assertion by pointing to its own Chinese Trademark for ELNACIONAL. Respondent contends that it submitted the application for its mark as early as March 11, 2002. However, Respondent does not assert that its registration of ELNACIONAL is related to his companies or that he is using the ELNACIONAL mark in relation to any of his companies. Further, even though Respondent contends that he invests and runs several companies, and that delays are normal, the Panel notes that the Disputed Domain Name still does not resolve to an active site.
As indicated in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.7, although panels have tended to recognize that a respondent’s registration of a trademark which corresponds to a disputed domain name normally establishes rights or legitimate interests for the purpose of the second element of the UDRP, this is not always the case. In the present case, Respondent has failed to convince the Panel that its registration in 2002 of the trademark EL NACIONAL in China was not primarily obtained as a mere justification for the registration of the Disputed Domain Name. The Panel is of the opinion that the registration by Respondent of the ELNACIONAL trademark in China is to be considered as an attempt to circumvent the application of the UDRP, and therefore cannot establish rights or legitimate interests to the benefit of Respondent.
Respondent contends that Complainant has lost its rights in the EL NACIONAL Marks, because the Disputed Domain Name was registered before four of Complainant’s trademark registrations. This is not persuasive. Complainant began registering its EL NACIONAL Mark in 1970, over thirty years before the registration of the Disputed Domain Name. Notwithstanding that EL NACIONAL is a well-known mark, the registration of additional marks does not invalidate prior marks.
Based on the foregoing, there is insufficient evidence to indicate that Respondent has a right or legitimate interest in the Disputed Domain Name. Moreover, and as further discussed below, the Panel also finds no evidence in the record that Respondent’s use of the Disputed Domain Name is a legitimate noncommercial or fair use, or that Respondent is commonly known by the Disputed Domain Name.
The Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states nonexclusive circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
These examples are merely illustrative and are not meant to be exhaustive. Other circumstances may therefore lead to a finding of bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Complainant provides two arguments in support of its contention that the Disputed Domain Name was registered and being used in bad faith. Firstly, Complainant asserts that it has no relationship with Respondent and has not authorized to use Complainant’s EL NACIONAL Marks, an assertion Respondent does not challenge. Secondly, Respondent is known as registering domain names to be sold and has already faced previous UDRP proceedings due to the unauthorized registration of domain names. Respondent contends that he has never offered the Disputed Domain Name for sale to Complainant or its competitors in order to gain profit. Respondent further contends that, previous bad faith actions do not necessarily mean that Respondent is acting in bad faith in the present case.
Complainant’s main argument in support of its bad faith allegation is based on Respondent’s prior bad faith actions. Respondent is correct that his prior actions do not necessarily mean that he is now acting in bad faith. However, when the Panel views the facts in this matter along with Respondent’s prior history it points to bad faith. As discussed above, the Panel finds that the EL NACIONAL Marks are known well enough that it is possible to presume that Respondent knew of them when registering the Dispute Domain Name, a domain name that is virtually identical to Complainant’s preexisting domain name <www.el-nacional.com>. Further, and as discussed above, the same presumption is applicable to Respondent’s application for a Chinese Trademark, particularly in view of the fact that the words that make up the mark are Spanish and that the registration was in the same international class as Complainant’s.
With this in mind, the Panel turns to Respondent’s prior actions. Respondent has been involved in at least four prior domain name disputes, all of which resulted in the transfer of the domain name away from Respondent. See美国电影艺术与科学学院 v. Lin Zansong, WIPO Case No.: D2005-1034; 不列颠百科全书公司 v. Lin ZanSong, WIPO Case No. D2006-1518; Janel, S.A. de C.V. v. Lin ZanSong, supra; and Canary LLC v. Lin ZanSong, NAF Claim No. FA1515762. Further, a google search of Respondent’s name reveals that Respondent appears to have registered more than 500 domain names. As noted in Janel, S.A. de C.V. v. Lin ZanSong, supra, a pattern of conduct can give rise to a finding of bad faith (“[t]he Respondent has registered other domain names corresponding and/or confusingly similar to other third parties trademarks, indicating a pattern of conduct giving rise to bad faith registration and use of the disputed domain name <janel.com>.”) Given Respondent’s previous pattern of conduct of registering other third party’s domain names, Respondent’s involvement in prior domain name disputes resulting in the transfer of the domain name away from Respondent in each instance, and that the language of the Disputed Domain Name is in Spanish and is nearly identical to Complainant’s well-known EL NACIONAL Marks, the Panel finds it difficult to believe that Respondent’s registration of the Disputed Domain Name in this case is an exception to his prior pattern of conduct.
Notwithstanding any other arguments Complainant could have made, this Panel “believes that the poor drafting of a Complaint should not deprive a Complainant of substantial justice, when arguments not explicitly mentioned in the Complaint are both somewhat obvious and may be inferred from the global structure of the Complaint.” See VEDA GmbH v. Mr. Nicholas Silverstone, WIPO Case No. D2002-1040 It is clear to the Panel that, even if Respondent never offered the Disputed Domain Name for sale to Complainant or its competitors in order to gain profit, Respondent is at least in a position of “passive holding” which is not legitimate in the circumstances (VEDA GmbH v. Mr. Nicholas Silverstone, supra.) “Passive holding” does not as such prevent a finding of bad faith, particularly in cases where there are additional factors. See Incipio Technologies, Inc. v. Starfield Servicers Ltd., WIPO Case No. D2011-0418 (“when considering the fact that “Respondent presented no plausible reason why the Respondent did not use the disputed domain name for four years […] in conjunction with the fact that the Respondent has been passively holding the disputed domain name and has not submitted any evidence suggesting that the disputed domain name was selected for a legitimate use or purpose (refer to 6C), an inference of bad faith registration and use is made by the Panel.”); Compaq Computer Corporation v. Boris Beric, WIPO Case No. D2000-0042 (“the Panel must consider whether on the particular facts of a Complaint, the passive holding of domain names by Respondent amounts to Respondent acting in bath faith […] relevant circumstances were held to include: the strong reputation of Complainant’s trademark and its use internationally; and the Respondent’s failure to provide evidence of any actual or contemplated good faith use by it of the domain name.”); Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (“The Administrative Panel has considered whether, in the circumstances of this particular Complaint, the passive holding of the domain name by the Respondent amounts to the Respondent acting in bad faith. It concludes that it does. The particular circumstances of this case which lead to this conclusion are: (i) the Complainant’s trademark has a strong reputation and is widely known, as evidenced by its substantial use in Australia and in other countries, (ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name, (iii) the Respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name, (iv) the Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement, and (v) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.”); McDonald’s Corporation v. Easy Property, WIPO Case No. D2006-1142; VEDA GmbH v. Mr. Nicholas Silverstone, supra; Kabushiki Kaisha Hitachi Seisakusho d/b/a Hitachi Ltd v. J.K. Vavlitis Ltd, WIPO Case No. DCY2007-0001; Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021.
The Panel sees no reason not to follow the reasoning of the previous decisions mentioned above and finds that the overall circumstances of this case indicate that the Respondent registered and used the Disputed Domain Name in bad faith.
For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <elnacional.com> be transferred to Complainant.
Kimberley Chen Nobles
Date: April 9, 2014