WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fabricación de Maquinas, S.A . de C.V. v. WSC WorldSpace, WorldSpace Corporation
Case No. D2018-0462
1. The Parties
Complainant is Fabricación de Maquinas, S.A. de C.V. of Monterrey, Nuevo Leon, Mexico, represented by Clarke, Modet & Co., Mexico.
Respondent is WSC WorldSpace, WorldSpace Corporation of Broadway, New York, United States of America (“United States”), represented by Patrick Mair, Ireland.
2. The Domain Name and Registrar
The disputed domain name <fama.com> (the “Domain Name”) is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2018. On March 1, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 2, 2018, 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 request for clarification by the Center, Complainant filed an amendment to the Complaint on March 8, 2018. In response to a request for clarification by the Center, Complainant filed a second amendment to the Complaint on March 14, 2018. In response to a request for clarification by the Center, Complainant filed a third amendment to the Complaint on March 20, 2018.
The Center verified that the Complaint together with the three amendments 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 21, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 10, 2018. On March 30, 2018, Respondent requested an extension of the Response due date. In accordance with the Rules, paragraph 5(b), the Response due date was extended to April 14, 2018. The Complainant submitted a request for suspension on April 3, 2018. The Center notified the Parties on the same day that the proceeding was suspended. There were email exchanges between the Parties during the suspension period. The Response was filed with the Center on May 13, 2018. The Center reinstituted the proceeding and acknowledged receipt of the Response on May 23, 2018.
The Center appointed Clive L. Elliott Q.C. as the sole panelist in this matter on May 29, 2018. 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
Complainant is a Mexican based manufacturing company producing machinery, moulds and equipment for the glass industry. It is a subsidiary of Vitro, S.A.B. de C.V, an international group of companies known as “Vitro”.
Complainant is the owner of the FAMA trade mark in Mexico (“Complainant’s FAMA Mark”), with registration number no. 178461 and registered on September 1, 1973. It has also made application on April 10, 2017 for the registration of the FAMA trade mark in the United States, and on October 19, 2017in the European Union.
The Domain Name was registered on May 7, 1996. In accordance with the evidence submitted with the Complaint, the Domain Name resolved to a website displaying pay-per-click (“PPC”) links.
5. Parties’ Contentions
Complainant states that it and Vitro are currently one of the largest worldwide producers and distributors of glass products, machinery and equipment for the glass industry, and the most important in Latin America. It further states that they have invested millions of dollars in promoting their products and services and for this reason, the VITRO trade mark for glass products and Complainant’s FAMA trade mark for the production of machinery and equipment, have acquired a great recognition identifying the products of Complainant. Complainant argues that the VITRO trade mark and Complainant’s trade mark are unique and totally distinctive.
Complainant states that it started its business activities in 1909. The VITRO trade mark has been used in business since 1980, and Complainant’s trade mark has been used since 1943, although it was not officially registered until April 28, 1972.
Complainant contends that its products are sold in approximately 40 countries and territories, including the United States, Europe and Asia. In 2016 the consolidated sales of Complainant were USD 1,051 million, with exports throughout the world representing 26% of its sales.
Complainant asserts that it has always used and commercialized the name “Fama”, in association with Vitro, including promotion and advertising in Mexico and the United States, where Complainant’s products have been sold for decades including their domain name “www.fama.com.mx”.
Complainant contends that it sought to register the domain Name to represent its international projection. It was then that it was advised that the Domain Name had been registered by Respondent in 1996, but the development of a web page has not been visualized. Complainant further contends that it tried to engage with the Respondent regarding the transfer of the Domain Name with no success.
Complainant states that it has used the name of its company, and Complainant’s FAMA trade mark, as part of its commercial activities and consequently enjoys a strong reputation in the glass industry, and by having Vitro’s support, distribution channels, advertising and promotion, it has achieved recognition and a reputation equivalent to that of Vitro, worldwide.
Complainant submits that the Domain Name is identical to Complainant’s FAMA trade mark in that it completely reproduces it, and the similarity is sufficient to cause confusion with the public and create a false association with Complainant.
Complainant considers that Respondent has registered the Domain Name in bad faith and without having the right to do so, and is retaining the Domain Name as a passive holding as the website has no content, does not resolve to a web page and has had a lack of activity since its registration.
Complainant asserts that Respondent must have known of Complainant’s trade mark as it is easily verifiable through an Internet search. Complainant also asserts that there is no evidence that the Domain Name has been used in business, nor that Respondent has made demonstrable preparations for its use in relation to a good faith offer of products or services. The term “fama” is not included in any part of the name of the Respondent, nor can it be assumed that the Respondent is commonly known by “fama”, promoted or advertised with that name. Further Complainant states that it has not granted any authorization or license to Respondent to use Complainant’s trade mark.
Complainant contends that if a search is made in the Google or Lycos search engine for the term “fama”, references appear only as definition (Wikipedia) or as an association called “The Fire Apparatus Manufacturers’ Association” (FAMA).
Respondent claims that Complainant has provided no evidence of bad faith of Respondent in registering the Domain Name and claims instead that Complainant is attempting Reverse Domain Name Hijacking (“RDNH”).
Respondent asserts that Complainant has filed this Complaint because Respondent has ignored Complainant’s offers to purchase the Domain Name. Respondent states that it has received many offers to purchase this Domain Name over the years but has always declined to sell it.
Respondent takes no position with regard to any intellectual property rights Complainant claims in respect of the term “fama”. Respondent contends that “fama” is a dictionary term in several European languages, meaning “rumour” or “legend” in Serbo-Croatian and serving as a generic term for “fame”, “reputation”, and associated concepts, in, for example, Spanish, Italian, Albanian, and Maltese. Respondent submits that it bears no inherently distinctive features associated with invented terms and is not protected as such.
Respondent states that regardless of the claims of Complainant as to the exclusivity it might enjoy pursuant to intellectual property protections, “Fama” is a name currently used by a large number of individuals, companies and organizations worldwide in a broad range of industries and interests.
Respondent argues that its right to, and legitimate interest in, the Domain Name are demonstrated by a number of factors. First, that Fama is an organization founded in 1990 in Sarajevo, Yugoslavia (today Bosnia Herzegovina), by a journalist, TV producer, artist, and intellectual named Suada Kapic.
Secondly, it is contended that Ms. Kapic initially intended that Fama would be a multi-media production company, and indeed it produced a number of television programs in Yugoslavia in the early 1990s. After the war in Yugoslavia commenced, however, Fama was restricted in its ability to accomplish Ms. Kapic’s original purpose for the organization, and thus its role changed, it began to undertake artistic and cultural projects, and to draw attention to Sarajevo not just as a conflict zone, but as a living city.
Thirdly, that as a central part of this project was a publication called the “Guidebook to Sarajevo.” In November 1993, Harper’s Magazine profiled this publication and described Fama in the following terms:
“[Miroslav] Prstojevic is a member of FAMA, a group of Sarajevo writers, photographers, architects and other artists whose aim is to present their city “not as a victim but as a place of experiment where wit can still win over terror.”
Respondent also points out that in December 1993, the Washington Post ran a report on the “Guidebook to Sarajevo” and referenced Fama.
Respondent provides details, in some considerable length, of Fama’s activities. It is not necessary to list these activities in this decision. Further, Respondent provides additional evidence of the establishment and formal structure of Fama from 1994 onwards, when reference is made to an agreement between Workman Publishing and Fama relating to the distribution and sale of 25,000 copies of the Sarajevo Survival Guide.
Respondent further asserts that as Fama grew in prominence and began to attract more international attention, it sought “to develop a formal presence outside Bosnia”, including the establishment of a representative office New York. Fama, it is said, worked with a journalist and artist living in New York City named Ingo Gunther. Mr. Gunther’s operated through WorldSpace Corporation and facilitated the distribution of Fama’s artistic and cultural materials in the United States and so, it is said, set up a website to promote and publicize Fama and its work. This in turn included Mr. Gunther registering the Domain Name in 1996, in the name of Complainant.
Documents are provided to a back-up the claim to this relationship.
The short point is that the post war years in former Yugoslavia, when the crisis in Sarajevo had eased and efforts had shifted to reconstruction, including of the city’s cultural institutions, the website <fama.com> automatically directed visitors to another website aimed at publicizing these issues located at the domain <bosnia.net>.
Respondent therefore claims that it had a bona fide interest in the name Fama since at least 1994 when Fama became closely involved with Respondent and, through Respondent, sought to boost public awareness of its work.
Respondent asserts its right to make legitimate noncommercial and / or fair use of the Domain Name and it is appropriate that Respondent has and retains the ability to utilise the Domain Name.
Respondent repudiates any suggestion by Complainant that Respondent’s intent is for commercial gain, misleadingly to divert consumers away from Complainant, or to tarnish Complainant’s trade marks or service marks and notes Complainant has not provided any such evidence in support of its claim.
There is no evidence that Respondent registered the Domain Name for the purpose of targeting Complainant. There is no evidence that Complainant was within the contemplation of Respondent at the time of registration. No link has been demonstrated between Complainant and the Domain Name.
Respondent denies the allegation that the Domain Name was registered primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant, or to a competitor of Complainant, for valuable consideration.
Respondent advises that although the Domain Name currently redirects visitors to <directnic.com>, which purports to offer the Domain Name for sale, but that this is an error that Respondent attempted to rectify but, for reasons outside of its control, currently cannot.
Respondent denies the allegation that the Domain Name was registered in order to prevent Complainant from reflecting its trade mark in a corresponding domain name. On the contrary, by reason of how the Domain Name came into being, Complainant company was not within the contemplation of Respondent at the time of registration.
Respondent asserts that the parties cannot be described as competitors in any industry, nor in any geography. Complainant is a manufacturer of glass and glass-making equipment, whereas Respondent is a company that, inter alia, assisted a group of documentary filmmakers, journalist, artists and social activists. Respondent argues that the Domain Name was in no way registered by Respondent to disrupt Complainant’s business.
Respondent claims that the assertion of “passive possession” is not relevant, as Respondent has provided evidence of actual good faith use of the Domain Name, and Respondent did not conceal its identity or use false contact details while registering or using the Domain Name.
Contrary to Complainant’s unsupported assertions on passive holding and bad faith, Respondent relies on the consensus position that while passive holding does not prevent a finding of bad faith, Panels must examine the cumulative circumstances of the case, such as whether Complainant has a well-known trade mark; whether a response to the complaint has been filed; and whether the identity of the registrant has been concealed. None of these considerations merit a finding of bad faith in this case.
Respondent notes that Complainant avers to the strength of its trade marks and global reputation, yet it has provided no evidence as to the extent of its reputation in 1996 at the time of registration - and in particular its recognition among the creative / media industry in New York at that time. As a result, Respondent does not accept the assertion that it necessarily had knowledge of the Complainant’s trade marksat the time of registration.
6. Discussion and Findings
For the reasons set out below Complainant has not established grounds to support an order transferring the Domain Name.
A. Identical or Confusingly Similar
Complainant asserts it is the owner of a Mexican trade mark registered on September 1, 1973 for FAMA, an application on April 10, 2017 for the registration of the FAMA trade mark in the United States, and on October 19, 2017 in the European Union. Complainant further asserts that its business commenced in 1909 and that it has been using Complainant’s Mark since 1943.
For the purposes of this ground, the Panel is satisfied that Complainant has established that Complainant’s FAMA Mark has been registered in Mexico. Complainant’s FAMA Mark is the same as the Domain Name. Accordingly, Complainant has established that it has rights in respect of Complainant’s FAMA Mark and that the Domain Name is identical or confusingly similar to Complainant’s FAMA Mark.
Accordingly, the Panel is satisfied that the first element of the Policy has been met.
B. Rights or Legitimate Interests
In terms of whether Respondent has rights or legitimate interests in the Domain Name, Complainant asserts that it has always used and commercialized Complainant’s trade mark in association with its parent company Vitro, with a particular focus on Mexico and the United States. In essence, Respondent does not challenge this - it does however question whether Complainant has established that, as at 1996 when the Domain Name was registered, Complainant had sufficient reputation.
Timing is relevant in assessing this issue. The Domain Name was registered in 1996 - some 22 years ago. While Complainant may have used and registered Complainant’s trade mark, limited details are provided as to the nature and extent of that use and Respondent challenges these assertions.
A question which arises is whether Respondent is able to establish it has rights or legitimate interests in the Domain Name. Respondent has provided details of Fama’s existence, interests and activities and supported these details with documentary evidence. It has also shown that Fama sought to “develop a formal presence outside Bosnia”, which included establishing an office in New York City; and further that this involved a New York journalist and artist Ingo Gunther. Based on the submissions and documentation provided, it is reasonable to infer that a relationship existed between Fama, Mr. Gunther and WorldSpace Corporation and that this led directly or indirectly to or involved the registration and use of the Domain Name.
Nothing Complainant submits suggests that the drawing of such an inference is not open to the Panel.
Complainant argues that Respondent’s purported failure to identify the basis upon which it registered or acquired the Domain Name means there is there is no reliable basis for the Panel to infer that Respondent’s conduct is legitimate. The Panel disagrees. Respondent has provided a reasonable explanation for its registration and use of the Domain Name.
Accordingly, it is found that Complainant has failed to establish that Respondent lacks rights or legitimate interests in the Domain Name.
The Panel is not satisfied that the second element of the Policy has been met.
C. Registered or Used in Bad Faith
Having found that Complainant has failed to establish that Respondent lacks rights or legitimate interests in the Domain Name, Complainant’s argument that Respondent registered and used the Domain Name in bad faith loses its force. Having explained what “Fama” means and why the name was chosen and used the Panel concludes that there is no or insufficient evidence of registration or use in bad faith.
The fact that the Domain Name has been registered for 22 years without effective efforts by Complainant to recover the Domain Name supports this view.
The Panel is therefore not satisfied that the third element of the Policy has been met.
D. Reverse Domain Name Hijacking
Respondent alleges that Complainant has engaged in RDNH. Paragraph 15(e) of the Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”.
RDNH is defined under the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Panels have referred to paragraphs 3(b)(xiii) and (xiv) of the Rules in addressing possible RDNH scenarios. In short, panels have made it clear that the mere lack of success of a complaint is not itself sufficient for a finding of RDNH. Ultimately, this issue turns on Complainant’s conduct in all the circumstances.
The Panel does not accept Respondent’s assertion that Complainant has engaged in RDNH. This conclusion is reached for the following reasons:
(a) There is no basis to infer that Complainant knew it could not succeed as to any of the required three elements;
(b) Indeed, Complainant was successful in showing that it held relevant trade mark rights;
(c) There is no reason to conclude that Complainant ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint;
(d) There is no suggestion that Complainant has provided false or misleading evidence; and
(e) Finally, there is no basis to suggest that Complainant proceeded only on the barest of allegations without any supporting evidence.
The Panel therefore finds that the allegations of RDNH are not made out.
For the foregoing reasons, the Complaint is denied.
Clive L. Elliott Q.C.
Date: June 29, 2018