WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Telcel, C.A. v. jerm and Jhonattan Ramírez
Case No. D2002-0309
1. The Parties
The Complainant is Telcel, C.A, a company organized and existing under the laws of the Bolivarian Republic of Venezuela, with domicile in Avenida Francisco de Miranda, Edificio Parque Cristal. Piso 14, Torre Oeste, Los Palos Grandes, Caracas 1060, Venezuela. Telcel is represented in this administrative proceeding by Mr. Ricardo Antequera Hernández and Mr. Ricardo Antequera Parilli, attorneys-at-law, of Antequera, Parilli Rodriguez & Asociados, Law Offices, of Caracas, Venezuela.
The Respondent is "jerm", an entity of unknown legal nature, with an address at Edificio Ocutuy 9. Piso PH1, Ocumare del Tuy, Estado Miranda, Venezuela. Complainant has also called the administrative, technical and billing contact Mr. Jhonattan Ramírez as a party to this proceeding. According with the Whois database of Open SRS /Tucows, Inc. Mr. Ramírez has the same address as the registrant "jerm". However there are no elements in the record that evidence that "jerm" and Mr. Ramírez are one and the same person. Therefore the Panel considers that the Complaint has been directed against both "jerm" and Mr. Ramírez.
2. The Domain Name and Registrar
This dispute concerns the domain name, registered with Tucows com, Inc., 96 Mowat Avenue,Toronto, Ontario, M6K 3M1, Canada.
3. Procedural History
On April 1, 2002, a complaint concerning the domain name registration was electronically submitted to the World Intellectual Property Organization, ("the Center"). On April 8, 2002, the complaint was submitted in hardcopy. On April 4, 2002, the Center acknowledged receipt of the complaint.
On April 8, 2002, OpenSRS (Tucows, Inc.), the concerned registrar, replied to the Center�s verification request of the same day by informing that the domain name at issue was registered with it, that the registrant is "jerm", that "ramirez, jhonattan" is the administrative, technical and billing contact, that the Registration Agreement is in English, that the UDRP applies as per section 7 of the Registration Agreement, and that the domain name is in "on hold" within the registrar�s system.
On April 9, 2001, the Center sent a notification of complaint deficiency to the Complainant concerning the fact that the registrar with which the domain name is currently registered is Tucows, Inc, instead of the registrar that the Complainant had mentioned in its original Complaint. On April 12, 2002, the Complaint was accordingly amended.
On April 17, 2002, the Center sent its Notification of Complaint and Commencement of the Administrative Proceeding to the Respondent. The last day for sending the Response to the Complaint was May 7, 2002. Respondent failed to submit a Response or any other communication to the Center before or after such date. The Panel finds that the Center has discharged its responsibilities pursuant to Rules, Paragraph 2(a), in that it made all reasonable efforts to notify the complaint to the Respondent.
On May 10, 2002, the Center sent to the Respondent the Notification of Respondent Default.
On May 23, 2002, after having received Roberto A. Bianchi�s Statement of Acceptance and Declaration of Impartiality and Independence, the Center appointed him as sole panelist. The deadline for the Panel to render a decision was June 6, 2002. The Panel independently finds that it has been properly constituted, that the complaint and its amendment complied with all formal requirements, and that the fees have been paid.
On May 23, 2002, the electronic version of the case file was transmitted by the Center to the panelist.
The complaint and its amendment have been submitted in English. The registration agreement is in English. Complainant requested that this proceeding be in Spanish because Respondent has its domicile in Venezuela. On April 17, 2002, the Center advised the Respondent � both in English and in Spanish - that the Complainant had requested that this proceeding be conducted in Spanish. No response was sent to the Center�s request for confirmation of the language of the proceeding. As Respondent has not shown any interest in the matter, and there being no Spanish version of the Complaint, the panel decides that the proceeding be conducted in English (Rules, Paragraph 11).
There were no orders issued. There were no extensions.
4. Factual Background
The following uncontested facts are found by the Panel to be established as true:
Telcel, C.A is a Venezuelan company existing since 1991. The company is associated with Bellsouth Corporation. Telcel has a history of 10 years rendering integral telecommunication services, having nowadays more than 3.5 millions subscribers among fixed telephony, cellular and Internet access. Telcel (also known as Telcel Bellsouth) is the holder in the Republic of Venezuela of a numerous TELCEL marks, as follows:
TRADEMARK
Intntl. Class
Application No.
Registered Until
TELCEL
16
1991-15942
8/may/2008
TELCEL
16
1991-15921
11/sep/2008
TELCEL
26
1991-15922
11/sep/2008
TELCEL
17
1991-15923
11/sep/2008
TELCEL
14
1991-15924
11/sep/2008
TELCEL
11
1991-15925
11/sep/2008
TELCEL
9
1991-15926
11/sep/2008
TELCEL
1
1991-15928
11/sep/2008
TELCEL
6
1991-15931
11/sep/2008
TELCEL
28
1991-15932
11/sep/2008
TELCEL
2
1991-15933
11/sep/2008
TELCEL
25
1991-15936
11/sep/2008
TELCEL
16
1991-15938
11/sep/2008
TELCEL
6
1991-15947
11/sep/2008
TELCEL CELULAR C.A.
38
1994-6763
26/feb/2009
TELCEL
42
1994-6765
5/ene/2006
TELCEL, SU VOZ.
38
1994-14578
6/ago/2007
TELCEL811
38
1996-4786
9/may/2007
TELCEL811-1
38
1996-4787
9/may/2007
TELCEL811
38
1996-4788
9/may/2007
TELCEL411
38
1996-4789
9/may/2007
TELCELGOLD PLUS
38
1998-1065
2/jun/2010
TELCELGOLD PLUS
9
1998-1066
2/jun/2010
TELCELGOLD PLUS
35
1998-1067
2/jun/2010
TELCELGOLD PLUS
16
1998-1068
2/jun/2010
TELCELGOLD PLUS
41
1998-1069
2/jun/2010
TELCEL LMDS
38
1998-21432
10/sep/2009
CDMA TELCEL
38
1998-23652
17/ago/2010
TELCEL
9
1991-9076
1/jun/2011
Telcel, C.A is a licensee for Venezuela of the BELLSOUTH marks according to a trademark license agreement signed with Bellsouth Corporation, dated December 1, 1999, and attached to the Complaint as exhibit "F".
Telcel has undertaken costly advertising campaigns searching to position the TELCEL mark as required in the telecommunications industry. This has been evidenced by Complainant with brochures and inserts of promotions and institutional information, and a videocassette (VHS format) with various advertising commercials, attached as Exhibit "G".
Respondent registered the domain name on September 15, 2000.
As provided by incorporation in the registration agreement in effect, the applicable dispute resolution policy is the ICANN UDRP, which establishes this Panel�s jurisdiction in the instant case.
5. Parties� Contentions
A. Complainant
Complainant contends the following:
-The domain name is identical or similar to the point of creating confusion in respect to the mark "TELCEL" over which Complainant holds rights. The disputed domain name reproduces fully the mark "TELCEL", being the only addition another mark (BELLSOUTH) with whom Telcel maintains a partnership relationship and which jointly comprise the way in which Telcel identifies itself to the Venezuelan market (TELCEL BELLSOUTH.
-Being "TELCEL" a recognized and prestigious Venezuelan firm, the only intention for proceeding to register the domain is to obtain an improper and unfair benefit at the expense of the Complainant, by redirecting automatically any person entering the URL , towards its own web site , a behavior which is clearly illegal, using the mark TELCEL as digital "mirror" of the web site .
-Respondent does not hold any rights or legitimate interest in respect to the domain name. is a highly recognized mark in Venezuela and the mark of its main shareholder (Bellsouth) is also provided with an important level of recognition in the international context within the telecommunications industry. It is additionally a fantasy mark with which the personal name of Respondent�s has no coincidence at all. There is no way that Respondent could claim that he is provided with any type of quality or legitimate interest to hold the mark owned by Telcel. Furthermore, Complainant has never granted a license or any other authorization to Respondent to use the trademarks TELCEL or BELLSOUTH, eliminating the possibility of claiming fair use or bona fide commercial use of the domain name .
-As TELCEL is a notorious mark, it could not be thought that Respondent registered the domain name object of this dispute with the interest of competing with said entrepreneurial group by using marks belonging to others.
-In fact, the presence of Telcel as a service provider in the field of telecommunications is such that, within the locality where Respondent is domiciled, TELCEL has registered, as of January 18, 2002, 79,000 subscribers and it maintains representation contracts with 22 authorized sales agents in that region of Venezuela.
-The Venezuelan public immediately associates the word TELCEL with: (a) A company dedicated to rendering integral services in the field of telecommunications; or (b) The services themselves associated to the mark (cellular telephony, fixed telephony and added value services associated to the main service rendered).
-The domain name has been registered and used in bad faith by Respondent. Respondent registered the domain name for the benefit of another web site, identified under a domain name, which also belongs to him . The registration of said domain is unfair for the Complainant, relative to the possibility of peacefully developing its commercial strategies within the Internet business environment. Complainant is potentially exposed by virtue of the holding of the disputed domain name in the hands of someone willing to transfer it to whoever bids the best price, which may lead to a degrading usage of a mark, which identifies a serious and prestigious company in its commercial field. Respondent abuses the dominant position he holds, in respect to the Complainant. Respondent benefits of the recognition and notoriety of the TELCEL mark, to use it as a conducting wire for bringing attention to his end commercial interests, materialized in the site . The mere fact of having registered a notoriously known mark by the Venezuelan consumer as a domain name, with the intention to taking advantage of the prestige and reputation associated to the mark, constitutes in itself a behavior in bad faith, but since paragraph 4 a) (iii) of UDRP requires that it must be a question of concurrent behaviors (registration and use in bad faith), the re-directioning towards the web site , which is active and has been registered by Respondent, is sufficient to prove the use of bad faith of another person's mark, originated from an active attitude of Respondent. The site to where whoever request the address www., is automatically forwarded, belongs to a company dedicated to render services and assistance to the Venezuelan public in the field of private transportation (taxis). On the web site a competitor of Telcel in the mobile phones market (a company called Digitel) is advertised. There is no doubt of the association of Respondent with the site . At the end of the welcome page there appears the note about reservation of copyright, in favor of the company "Desarrollos JERM Soft C.A", which acronym coincides totally with the pseudonym under which Respondent identified himself to register the disputed domain name.
B. Respondent
Respondent has failed to submit a response, and is therefore in default. The specific allegations and contentions of the Complainants against the domain name registration bound the Respondent to respond specifically. According with Rules, Paragraph 5(b)(i) "(t)he response shall (...) (r)espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain-name holder) to retain registration and use of the disputed domain name (...)".
The Panel further notes that the Notification of Default by the Center clearly advised the Respondent about the consequences of its failing to submit a response.
In case of a default, under Rules, Paragraph 14 (a), the Panel "shall proceed to a decision on the complaint", and under Rules, Paragraph 14(b), the Panel "shall draw such inferences therefrom as it considers appropriate".
The Respondent�s default would indicate that the Complainants� assertions by themselves are sufficient ground for the Panel to proceed to a default decision in their favor. However the Policy does not allow to automatically draw such a conclusion, because "the complainant must prove that each of these three elements are present". Policy, Paragraph 4(a), in fine.
6. Discussion and Findings
6.1. Identity or Confusing Similarity
Complainant has established sound rights in the Venezuelan TELCEL mark with nearly thirty registrations, in various international classes, all of them in effect, and pre-dating the domain name registration. Telcel, C.A., although not a trademark rights holder for the BELLSOUTH mark, is a licensee for Venezuela of the BELLSOUTH trademark. In this respect the instant case is similar to WIPO Cases D2000-0914 Compañía de Radiocomunicaciones Móviles S.A. and BellSouth Corporation v. Argentina Web Design, and D2000-0915 Compañía de Radiocomunicaciones Móviles S.A. and BellSouth Corporation v. Juan Bolinhas d/b/a "MOVICOM BELLSOUTH", decided on October 5, 2000, by this same panelist. In D2000-0914 it was decided that "by virtue of the agreement referred to at 4 above the use and co-branding of MOVICOM and BELLSOUTH was authorized to the licensee CRM by the licensor BellSouth Corporation. The Panel accepts Complainants�allegation that the combined use of the trademarks MOVICOM BELLSOUTH has been largely publicized in Argentina since both Complainants entered into the Trademark License Agreement, and that Complainants identify themselves jointly as MOVICOM BELLSOUTH. The first meaningful portion of the domain name is certainly identical letter-by-letter to the MOVICOM mark, and the second meaningful portion is also identical to BELLSOUTH. The domain name , while not identical, is at least confusingly similar to Complainants� marks MOVICOM and BELLSOUTH, respectively. The addition of both marks reinforces the impression that the resulting compound refers to each of the individual, compounding marks. This is one of the natural effects of co-branding. The fact that MOVICOMBELLSOUTH has apparently not been registered as a mark by either of the Complainants is irrelevant. No other company or person excepting CRM and/or SouthBell - or someone with rights derived from them - could in fact be entitled to apply for such registration in Argentina and probably in the USA as well. Respondent would be no exception, and it has apparently not submitted an application for the trademark registration of MOVICOMBELLSOUTH in either Argentina or USA."
A similar reasoning can be applied to the present case, where there is no registration of a TELCELBELLSOUTH mark shown by Complainant. No other person in Venezuela may reasonably apply for the TELCEL or the BELLSOUTH trademark registration except Complainant or its licensor BellSouth Corporation. It is unessential that in the present case BellSouth Corporation is not a party to the proceeding, because it has been evidenced that it granted a license of the BELLSOUTH mark to the Complainant, and because a simple comparison between the disputed domain name and the TELCEL mark shows that the domain name is confusingly similar to Complainant�s mark, in that it copies the mark and the licensed mark, a combination of marks with which Complainant is currently known in Venezuela.
The Panel finds that the requirement of Policy, Paragraph 4(a)(i) is met.
6.2. Lack of Rights and Legitimate Interests
Complainant has denied that Respondent has any rights or legitimate interests in the domain name. Respondent has not alleged or evidenced any circumstances for a finding in its favor under Policy, Paragraph 4(c).
On June 4, 2002, the Panel independently tried to establish an Internet connection with the web page under the corresponding domain name. The connection resulted in an automatic re-direction to the Web site, which delivered a "Cannot find server or DNS error" message. This means that as of today the web site is not being used in any respect. It also means Respondent is not making any bona fide use, or any fair and non-commercial use of the domain name.
The requirement of Policy, Paragraph 4(a)(ii), is thus present.
6.3. Bad faith Registration and Use
Complainant has evidenced that prior to this proceeding Respondent had re-directed the Web page to the Web site, which at that time showed that it was a commercial site, unfairly profiting of any connection of an Internet user looking for the Complainant�s Web site. Such re-directioning placed Respondent exactly within the meaning and wording of Paragraph 4(b)(iv) of the UDRP, a circumstance of registration and use in bad faith:
"by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location".
The fact that as of today all contents of the . Web site have been removed does not mean that the domain name is not being used in bad faith. As already decided in WIPO Cases Nos. D2000-0021 Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomre (March 9, 2000), D2000-1679 Playboy Enterprises International, Inc. v. Victoriano Moreno Martín (February 23, 2001), D2000-0592 Canonais, S.L. v. María Dolores Díaz Ros (October 2, 2000) and D2002-0183 DKV Deutsche Krankenversicherung AG v. Sol And Sun Golden S.L. (May 20, 2002) a sufficiently proven one-time bad faith use satisfies the wording and meaning of the UDRP, in that it requires that the domain name "is being used" in bad faith.
The Panel thus finds that the domain name has been registered and is being used in bad faith (Policy, Paragraph 4(a)(iii)).
7. Decision
The Panel finds that the disputed domain name is confusingly similar to Complainant�s TELCEL marks, that Respondent lacks rights and legitimate interests in the domain name, and that the domain name was registered and is being used in bad faith.
Accordingly and pursuant to Policy, Paragraph 4(i) and Rules, Paragraphs 10(d) and 15, the Administrative Panel grants the remedy requested in the complaint, and requires that the domain name registration of be transferred to the Complainant, Telcel, C.A.
Roberto A. Bianchi
Sole Panelist
Dated: June 5, 2002
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