WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Grupo Televisa, S.A. , Televisa, S.A. de C.V. , Comercio M�s, S.A. de C.V. , Estrategia Televisa, S.A. de C.V. , Videoserpel, Ltd. v. LaPorte Holdings
Case No. D2005-0590
1. The Parties
The Complainant is Grupo Televisa, S.A. , Televisa, S.A. de C.V., Comercio M�s, S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel Ltd., Grupo Televisa, S.A., Mexico, represented by Leventhal, Senter and Lerman, PLLC, United States of America.
The Respondent is LaPorte Holdings, Los Angeles, California, United States of America.
2. The Domain Names and Registrars
The disputed domain names , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , ,, , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , are registered with NameK.
The disputed domain name is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June�7,�2005. On June�9,�2005, the Center transmitted by email to NameK and Moniker Online Services, LLC a request for registrar verification in connection with the domain names at issue.
On June�10,�2005 NameK and 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.
On June�22,�2005 Moniker Online Services, LLC 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.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June�17,�2005.
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”), 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 June�23,�2005. In accordance with the Rules, paragraph 5(a), the due date for Response was July�13,�2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July�14,�2005.
The Center appointed Ada L. Redondo Aguilera as the sole panelist in this matter on July�20,�2005. 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 relevant information that follows, is derived from allegations in the Complaint (most of them supported by annexed documents), which were not refuted by Respondent.
The Complainant is the international group of companies known as, and collectively referred to hereinafter as, “Televisa”. This group of companies is headed by Grupo Televisa, S.A. from Mexico, and comprised of numerous wholly-owned subsidiaries including Televisa, S.A de C.V., Comercio M�s, S.A. de C.V. Estrategia Televisa, S.A. de C.V., Club de Futbol America, S.A. de C.V and Videoserpel, Ltd., a Swiss corporation.
According to the Network Solutions WHOIS database, the registrant of the following domain names is LaPorte Holdings: , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , registered with Namek Internet Domain Name Registrar and , registered with Moniker Online Services, LLC.
Complainant found that Respondent registered the eighty-two (82) disputed domain names and that each of them, includes one or more trademarks and its combinations and permutations with other words and that Respondent was using them to misdirect Internet users seeking Complainant’s websites either to commercial advertising websites or passive websites (Respondent had registered an additional two domain names that have since been abandoned).
On December�14,�2004, Complainant sent via e-mail and Federal Express a cease and desist letter to the registrant of fifty-two (52) domain names -- that is, Respondent -- advising it that the unauthorized use of Complainant’s TELEVISA, ESMAS, RITMOSON LATINO, and EL CANAL DE LAS ESTRELLAS marks, in relation to the domain names, infringed Complainant’s registered marks and demanding that Respondent transfer the domain names to Complainant. Shortly thereafter, NameKing, the domain names’ registrar, contacted Complainant and indicated that Respondent would transfer the fifty-two (52) domain names to Complainant but after intentions to contact the Registrar and the Respondent, no answer was found and consequently no direct solution was established.
Complainant also discovered that Respondent registered an additional twenty-four (24) domain names using Complainant’s marks. Complainant sent a follow-up cease and desist letter via e-mail and Federal Express to Respondent, demanding the transfer of the initial fifty-two (52) and additional twenty-four (24) domain names. Complainant received no response. Since then, Complainant has learned that Respondent registered an additional seven (7) domain names (and abandoned two), for a total of eighty-one infringing domain names.
After the unfruitful intentions to recover the list of domain names that includes the Complainant marks or any variations, adaptations or combination of those marks directly from the Respondent, Complainant decided to recover them using this Uniform Domain Name Dispute Resolution Policy (“The Policy” or the “UDRP”).
5. Parties’ Contentions
A. Complainant
The Complainant’s arguments can be summarized as follows: That Respondent registered the eighty-two (82) domain names that include one or more of the Complainant’s marks (with many letter changes and combinations) or consist in the combination of common or commercial words with one of the Complainant’s marks; that Respondent has no rights or legitimate interests in the disputed domain names, and that the Respondent registered and is using the disputed domain names in bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings.
In order for Complainant to prevail and have the disputed domain names (list of them) transferred to it, Complainant must prove the following (the Policy, paragraph 4(a)(i-iii):
- the domain names are identical or confusingly similar to the marks in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain names; and
- the domain names were registered and are being used in bad faith.
A) Identical or Confusingly Similar:
According to Policy, paragraph 4(a)(i) “The domain names are identical or confusingly similar to marks in which the Complainants has rights”:
Complainant Marks Rights:
Complainant has established one of the largest media company in the Spanish-speaking world and a dominant figure in the international media and entertainment business. Complainant produces the most Spanish-language television programs (52,000 hours in 2002) and is believed to own the largest library of Spanish-language television programming in the world, which it broadcasts, along with programs produced by others, through its networks, its cable system, and DTH satellite services in which it owns interests in Mexico, Latin America, and Spain. Complainant licenses its programming to other television, pay-per-view television, and cable broadcasters throughout the world in many languages. Complainant is also believed to be the leading worldwide publisher of Spanish-language magazines and is a major international distributor of those magazines and other periodicals. Complainant engages in other businesses, including radio production and broadcasting, professional sports and show business promotions, paging services, feature film production and distribution, dubbing, and a major Spanish-language Internet portal, EsM. In�2002, Complainant’s net sales totaled over 2 billion U.S. dollars.
Complainant has registered the TELEVISA and/or TELEVISA & Design marks (the “TELEVISA marks”) in over fifty (50) countries, including the European Union and the United States of America. The TELEVISA marks are used in connection with television broadcasting services and a wide variety of other entertainment-related services.
Complainant owns a registration for the TELEVISA DEPORTES mark in Mexico and has applied to register this mark in the United States of America. Complainant uses the TELEVISA DEPORTES mark (“deportes” is Spanish for “sports”) in conjunction with numerous sports-related services, including the broadcast and promotion of sporting events in Mexico, such as professional wrestling matches and soccer games. It also uses the mark with the sale of sports-related products, such as books, videogames, and team merchandise.
Complainant has registered the ESMAS and/or ESMAS & Design marks (the “ESMAS marks”) in over sixty (60) countries, including the European Union. Complainant uses the ESMAS marks in connection with Complainant’s well-known Spanish-language Internet portal EsM and with music-related services, such as reporting musical news and events, selling products such as compact discs, providing access to Complainant’s radio broadcasts, promotional marketing such as musical trivia contests, and similar services involving music featured on Complainant’s children’s website.
Complainant first used its CLUB AMERICA mark in 1949 to identify what has become one of Mexico’s most popular and successful professional soccer teams. The team offers clinics and expositions throughout Mexico, Latin America, and the United States of America. Complainant has developed substantial common law rights to the CLUB AMERICA mark through continuous and extensive use of the mark.
Complainant owns registrations and applications for the EL CANAL DE LAS ESTRELLAS, RITMOSON, RITMOSON LATINO, BANDAMAX and TELEHIT marks throughout the world. Complainant first used the EL CANAL DE LAS ESTRELLAS mark as early as November�24,�1990, the RITMOSON and RITMOSON LATINO marks (“the RITMOSON marks”) as early as April�30,�1994, the BANDAMAX mark as early as December�1,�1996, and the TELEHIT mark as early as August�27,�1993. Complainant uses the EL CANAL DE LAS ESTRELLAS mark worldwide in connection with television broadcasting services. Complainant uses the RITMOSON, BANDAMAX and TELEHIT marks worldwide in connection with television broadcasting services and entertainment-related services, including television programs, music programs and prerecorded electronic media (such as compact discs and DVDs) containing music and television programs.
Complainant presented to this Panel enough evidence that can be used not only to recognize the marks rights but also to prove that those marks are known worldwide. Hence, the Panel recognizes that Complainant has continuously and extensively used all of its marks in national and international commerce and on the Internet; also the Panel recognizes that those marks are very well known or famous. Also, the Panel acknowledges that Complainant has registered the corresponding domain names for many of its marks.
Complainant also said, which is well-established, that confusing similarity is normally found where a domain name corresponds to a typographical error in the spelling of another mark. Robert H. Ham Associates, Limited v. LaPorte Holdings, Inc., WIPO Case No. D2004-1051 (March�4,�2005) (finding Ham and Hamm confusingly similar); Europ�ene de Traitement de l’Information v. Horoshiy, Inc., WIPO Case No. D2004-0706 (November�4,�2004) (finding confusingly similar to complainant’s CYBERMUT mark). Most of Respondent’s domain names represent common misspellings of one of Complainant’s marks and are subsequently confusingly similar to them.
Simply deleting a letter or changing the order of letters from Complainant’s mark does not create a distinguishable domain name. Edgar Snyder & Associates, L.L.C. v. Henry Chan, WIPO Case No. D2003-0929 (January�27,�2004); see also Soci�t� Fran�aise du Radiot�l�phone- SFR v. LaPorte Holdings, WIPO Case No. D2004-0926 (January�25,�2004) (omitting a letter from complainant’s mark did not create a non-confusing or distinct mark); Grupo Televisa, S.A. v. Party Night Inc., a/k/a Peter Carrington, WIPO Case No. D2003-0228 (May�21,�2003) (domain name confusingly similar to complainant’s TELEVISA mark).
The addition of short phrases, descriptive words, or geographical terms to a distinctive or famous mark does not prevent confusion. HBH, L.P. v. LaPorte Holdings, WIPO Case No. D2004-0864 (January�23,�2005) (addition of ‘online’, ‘store’, or ‘the’ does not avoid confusion); Nokia Corporation v. Horoshiy, Inc., LaPorte Holdings, WIPO Case No. D2004-0851 (December�31,�2004) (addition of a geographic term does not distinguish domain name from complainant’s mark).
Further, Respondent’s addition of “www” at the beginning of some of the domain names actually increases the similarity between the domain names and Complainant’s marks. Also, combining two marks, such as Respondent’s or domain names, creates confusion. Cr�dit Industriel et Commercial S.A., Banque Scalbert Dupont S.A. v. LaPorte Holdings, Inc., WIPO Case No. D2004-1110 (March�31,�2005) (combining two of complainant’s marks likely to cause confusion and stating “the incorporation of the totality of one of the marks in the disputed domain name would suffice to create a real and strong likelihood of confusion”).
Every disputed domain name has a root in one of Complainant’s marks. While descriptors have been added by Respondent in some instances, the domain names are insufficiently distinguishable. If Complainant’s marks were “in common usage, or used in a manner or context unrelated to Complainant’s name, or if it conveyed a thought or action independent of that name, it conceivably could have been distinctive enough to survive the “identical or confusingly similar” test; but there is no basis to so conclude in this case”. Comerica Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0615 (October�18,�2004); see also Government Employees Insurance Company v. Henry Chan, WIPO Case No. D2004-0129 (May�13,�2004) (confusing similarity when domain name is derived from complainant’s name and has no independent meaning).
For the Panel, it is fair to say that this is, in essential, a cybersquatting case. The Panel finds that there is no doubt that the domain names in dispute: , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , ,, , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and , that were registered and used by Respondent, are identical or confusingly similar to the famous and distinctive Complainant marks (Trademark and Service Marks).
In order to establish the similarities of the eighty-two (82) disputed domain names, the Panel admits similarity if, in each domain name, appears one or two or more combinations of the Complainant’s marks and also if, in each domain name, appears one misspelling or other typographical error of a Complainant’s mark or the mark with some other words, all in order to create confusion.
It is the Panel’s opinion that the misspelling of a trademark registered as a domain name creates similarities and confusion. This is a very well known principle that has been discussed in similar cases: Gannett Co., Inc. v. Henry Chan, WIPO Case No D2004-0117 (WIPO April�8,�2004); CimCities LLC v Party Night, Inc., WIPO Case No. D2002-0613 (August�16,�2002); Microsoft Corporation v. M aka Tarek Ahmed, WIPO Case No. D2000-0548, July 21 2000; Dow Jones & Company, Inc. and Dow Jones LP vs John Zuccarini, WIPO Case No. D2000-0578 (August�28, 2000).
In this case, the Panel has no doubt each of the eighty two disputed domain names has words or a combination of words (including misspelling of them) that are confusingly similar to Complainant’s marks, therefore, paragraph�4(a)(i) of the Policy is satisfied.
B) Respondent does not have any rights or legitimate interests in the domain names.
Pursuant to�paragraph�4(c) of the Policy, Respondent may establish its rights or legitimate interests in the disputed domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no mark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the mark or service mark at issue.
The Panel finds the Respondent has no legitimate rights or interests in each of the eighty-two (82) disputed domain names. According to the Complainant, the Respondent has no authorization or license to register or use Complainant’s trademarks as domain names.
The Panel also finds that Respondent failed to demonstrate any rights, good will or bona fide or any proof of legitimate interests in each of the eighty-two (82) disputed domain names and also, Respondent is not well-known with any of the eighty-two (82) disputed domain names.
The Panel concludes that Respondent has no rights or legitimate interests in each of the eighty-two (82) disputed domain names, because it is in default in this proceeding and did not make any effort to prove its legitimate interests in the eighty-two (82) domain names in dispute. Therefore, paragraphs 4(a)(ii) and 4(c)(i), (ii) and (iii) of the Policy have been satisfied.
C. Respondent registered and has used the domain names in bad faith.
According to paragraph�4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the disputed domain names in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the mark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain names; or
(ii) that Respondent has registered the disputed domain names in order to prevent the owner of the mark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
Based on the evidence presented in this case, the Panel states that Respondent is trying to attract, for commercial gain, Internet users and there is no doubt that the registration of the eighty-two (82) disputed domain names that contain a word or a variation or combination of a mark or a mark, is to secure that Internet users who are searching for the mark owner’s websites will reach any of the Respondent’s websites and confusingly will act upon it.
According to paragraph 4(b)(iv) of the Policy in this case, the large amount of domain names registrations which involve many variations, permutations, mixes, misspellings of the Complainant’s marks indicate that the prime intention of Respondent is to obtain a commercial revenue out of the eighty-two (82) disputed domain names, even if this is direct or indirect, from the mark owner, attracting Internet users to its own websites, misleading them from the Complainant’s websites.
The Panel is convinced that the simple act of registering the eighty-two (82) disputed domain names that include famous or very well-known marks (even misspelling of them) or combinations, or permutation of them is in order to obtain commercial gain, creating confusion and is an act of bad faith.
The Panel finds it is relevant to mention that Respondent is a recurrent and habitual, and has been involved, as a “Respondent”, in many cases, such as the following, amongst others: Krome Studios Pty, Ltd. v. LaPorte Holdings, Inc., WIPO Case No. D2004-0707; Medco Health Solutions, Inc. v. LaPorte Holdings, Inc., WIPO Case No. D2004-0800; Soci�t� des H�tels M�ridien v. LaPorte Holdings, Inc., WIPO Case No. D2004-0849; Nokia Corporation v.Horoshiy, Inc., LaPorte Holdings, WIPO Case No. D2004-0851; HBH, L.P. v. LaPorte Holdings, WIPO Case No. D2004-0864; Soci�t� Fran�aise du Radiot�l�phone – SFR v. LaPorte Holdings, WIPO Case No. D2004-0926; Karl’s Sales and Services Company, LLC v. LaPorte Holdings, Inc., WIPO Case No. D2004-0929; Fuji Photo Film U.S.A. v. LaPorte Holdings, Inc., WIPO Case No. D2004-0971; Knight Transportation Inc. v. LaPorte Holdings, WIPO Case No. D2004-1022; Robert H. Ham Associates, Limited v. LaPorte Holdings, Inc., WIPO Case No. D2004-1051; CavinKare Private Limited v. LaPorte Holdings, Inc. and Horoshiy, Inc., WIPO Case No. D2004-1072; AT&T Corp. v. LaPorte Holdings, Inc., WIPO Case No. D2004-1088; Specialty Store Services, Inc. v. Horoshiy, Inc. & LaPorte Holdings, Inc., WIPO Case No. D2005-0015; Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. LaPorte Holdings, Inc., WIPO Case No. D2005-0030; Cr�dit Industriel et Commercial S.A., Banque Scalbert Dupont S.A v LaPorte Holdings, Inc., WIPO Case D2004-1110, at the WIPO Arbitration and Mediation Centre. Also, cases in other Alternative Dispute Resolutions Service Providers, most of the cases where Respondent has been involved, correspond to a registration or multiple registrations of domain names of famous or notorious marks or trademarks, or even commercial names. This point reveals that Respondent knows how to manage in Internet the value of a trademark or service mark, not only for the marks owner’s point of view (trying to sell directly to the mark owners), but also to create wealth or commercial gain out of the Internet users who will arrive to Respondent’s websites by mistake when the intention of these users are really trying to get into the Complainant’s official websites (creating risk of association and confusion for the consumers point of view). This repetitive and notorious conduct of Respondent is also interpreted by the Panel as a behavior in bad faith.
In WIPO Case No. D2004-0117, the panel stated: “As far as bad faith is concerned, the Panel notes that Respondent obviously knew the Complainant’s trademarks when registering the domain names as in many cases, the Respondent just misspelled the Complainant’s trademarks, added a generic term or the name of a geographical area to these trademarks.(…) In order to make such modifications to Complainant’s trademarks, the Respondent necessarily knew these trademarks prior to registering the contested domain names.” In this case, bad faith is also exposed by the registering of some many variations of the Complainant’s marks, the Panel considers thus that Respondent knew, not only of the value of the marks, but also of its potential to obtain (directly or indirectly) an economical revenue.
The Panel finds that the simple act of registration by Respondent of the eighty-two (82) disputed domain names that include one or more combination of words that correspond to a number of worldwide famous marks or the combination of them with other words is, also in bad faith.
The Panel finds that Respondent registered and was using the disputed domain names in bad faith. Respondent's conduct violates paragraphs 4(b) (ii) and (iv) of the Policy.
7. Decision
The Complainant has proved that the eighty-two (82) domain names in dispute are identical or confusingly similar to the Complainant’s marks in which it has rights, that the Respondent has no rights or legitimate interests in the disputed domain names and that the Respondent registered and used the disputed domain names in bad faith.
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 names: , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , ,, , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and be transferred to the Complainant.
Ada L. Redondo Aguilera
Sole Panelist
Date: August�3,�2005
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