WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Masisa S.A. v. V eight marketing, Emilio Lanzagorta
Case No. D2007-1242
1. The Parties
The Complainant is Masisa S.A., Santiago, Chile, represented by Carey y C�a. Ltda., Chile.
The Respondent is V eight marketing, Emilio Lanzagorta, Madrid, Spain.
2. The Domain Name and Registrar
The disputed domain name is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 22, 2007. On August 23, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On August 24, 2007, eNom transmitted by email to the Center its verification response confirming that the 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, the Complainant filed two amendments to the Complaint on September 21, 2007 and October 4, 2007, respectively. The Center verified that the Complaint together with the amendments 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 October 9, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 29, 2007. The Response was filed with the Center on October 25, 2007.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on November 6, 2007. 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.
Both prior and subsequent to appointment of the Panel, Complainant and Respondent each submitted supplemental documents in this proceeding. In light of the successive documents transmitted by the parties, and in an effort to clarify their respective positions, the Panel on November 12, 2007, issued Procedural Order No. 1, which stated, inter alia:
“In light of the various submissions and exchanges of information between the parties to this stage, the Panel orders that Complainant shall have a period of seven calendar days from the date of this Order to submit a supplemental submission presenting in a direct and concise format the arguments and supporting documents that it wishes the Panel to consider in respect to its allegations against Respondent. Supporting documents shall be electronically scanned and clearly identified. Respondent will thereafter have a period of seven calendar days to submit a supplemental submission presenting in a direct and concise format the arguments and supporting documents it wishes the Panel to consider in respect to the allegations of Complainant, also electronically scanning and clearly identifying supporting documents.”
Each of the parties duly responded to Procedural Order No. 1, Complainant by email (with attachments) dated November 16, 2007, and Respondent by email (with attachments) dated November 23, 2007.
4. Factual Background
Complainant has registered the trademark PLACACENTRO MASISA on the trademark register of Argentina (INPI), including (but not limited to) registration number 1862713, dated May 24, 2002, in International Class (IC) 35, and registration number 1862712, dated May 24, 2002, in IC 20; the trademark PLACACENTRO MASISA on the trademark register of Nicaragua, including (but not limited to) registration number 57730, dated May 20, 2003, in IC 19; the trademark PLACACENTRO on the trademark register of Uruguay, registration number 324,357, dated January 17, 2001, in IC 39; the trademark PLACACENTRO MASISA on the trademark register of Mexico (IMPI), registration number 833547, dated May 28, 2004, in IC 20, and registration number 830520, dated April 19, 2004, in IC 35; the trademark PLACACENTRO on the trademark register of El Salvador, registration number 00235, book 0130, folios 0471-0472, dated May 25, 2001, in IC 20; the trademark MASISA on the trademark register of Costa Rica, registration number 119565, dated April 7, 2000, in IC 20; the trademark MASISA on the Principal Register of the United States Patent and Trademark Office (USPTO), including (but not limited to) registration number 2822460, dated March 16, 2004, in IC 20, covering “furniture”, and registration number 2844323, dated May 25, 2004, in IC 19, covering “building materials, namely, wood boards”. Complainant has submitted documentary evidence of each of the aforesaid trademark registrations. In addition Complainant has asserted and provided registration numbers for registration of PLACACENTRO MASISA in Brazil, Colombia, Dominican Republic and Venezuela. Complaint and Supplemental Submission of November 16, 2007.
Complainant has registered the domain names and in Chile in 1998 and 1996, respectively. (Complainant’s Supplemental Submission of November 16, 2007). Complainant operates a commercial Internet website at these addresses. This website indicates that Complainant operates a chain of distribution outlets for building supplies and services under the name PLACACENTRO MASISA in a number of countries in Latin America, including Argentina, Brazil, Chile, Colombia, Ecuador, Mexico, Paraguay, Peru, Uruguay and Venezuela. (Panel visit of December 6, 2007).
According to the Registrar’s Verification Report, Respondent is the registrant of the disputed domain name . According to an eNom WHOIS database report, the record of registration for the disputed domain name was created on December 5, 2006.
The disputed domain name was initially registered by Respondent on behalf of a client Mexican corporation, Madereria Fortes S.A. de C.V. Prior to filing its Complaint in this matter, Complainant contacted the owner of this Mexican company in an effort to secure a voluntary transfer of the disputed domain name. At this time, content on the website addressed by the disputed domain name referred to this Mexican wood products company. Complainant was advised that while the Mexican company was willing to voluntarily transfer the disputed domain name, it had engaged the services of Respondent to design its website, and Respondent had registered the disputed domain name in its own name.
Subsequent to Complainant’s initial efforts to obtain voluntary transfer of the disputed domain name, the content of the website identified by the disputed domain name was modified by Respondent to advertise and promote an enterprise selling solar panels under the name “Placa Centro Masisa”, subheaded “Sistemas de Placas Solares”. The website now identified by the disputed domain name does not provide an address or other location of the aforesaid business, although it does list a telephone number and email address. The telephone number is identical to Respondent’s “V eight marketing” telephone number included in the record of registration for the disputed domain name.
Respondent throughout its submissions in this proceeding has not provided any concrete evidence of conducting business as a vendor of solar panels. Respondent has provided evidence that a third party operates a pizza business in Spain under the name “Masisa”, and that this pizza business has registered and used the domain name .
It is common ground between the parties that the terms “Masisa”, “Placacentro”, and “Placacentro Masisa” are not registered as trademarks in Spain.
The Registration Agreement in effect between Respondent and eNom subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory Administrative Proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions
A. Complainant
Complainant asserts that it has rights in the trademark PLACACENTRO MASISA in a number of countries in Latin America, including Mexico, based on registration in those countries, and that it has used that trademark in commerce for a substantial period of time. Complainant asserts rights in the trademark MASISA in a substantial number of countries, including in the United States, based on registration and use in commerce. Complainant further asserts rights in the trademark PLACACENTRO based on registration and use in a number of countries.
Complainant argues that the disputed domain name is identical to its PLACACENTRO MASISA trademark for purposes of the Policy.
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name. Complainant asserts that Respondent, and/or its client, had knowledge of its trademark when it registered the disputed domain name, and that Respondent’s client at the time of registration was doing business in the same industry as Complainant. Complainant indicates that at the time of registration of the disputed domain name, Respondent and/or its client was attempting to attract for commercial gain Internet users to its website by creating confusion as to the source, sponsorship, affiliation or endorsement by Complainant of Respondent’s website.
Complainant further argues that following its contact with Respondent’s client and Respondent, that Respondent altered the content of the website identified by the disputed domain name to give the appearance of a legitimate use of the disputed domain name. Complainant argues that Respondent has no trademark rights in the disputed domain name, has not been known by the disputed domain name, and is not making a legitimate use of the disputed domain name.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
B. Respondent
Respondent argues that Complainant has no legal grounds for its Complaint because the disputed domain name was legally available at the time of purchase and was purchased from a registrar, and that Respondent purchased the disputed domain name for offering goods outside the scope of Complainant’s activities, and outside its geographic area.
Respondent states that to the best of its knowledge, Complainant has never used or been known on the Internet as “placacentromasisa”, but has instead used names like “placacentro” and/or “masisa”.
Respondent states that Complainant has no trademark rights in Spain, the country where the disputed domain name has its registration address and is being used. Respondent asserts that it has rights in the disputed domain name because it is using it for a solar panel business.
Respondent argues that analogues to the disputed domain name are available for purchase by Complainant in countries where it has not yet purchased them, including Venezuela, Mexico and Brazil.
Respondent requests the Panel to reject Complainant’s request to direct the Registrar to transfer the disputed domain name.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this Administrative Proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
There is substantial evidence on the record of this proceeding that Respondent received adequate notice of the initiation of the proceeding. Each party has submitted initial and supplemental submissions, including a significant number of evidentiary attachments. The Panel is satisfied that each party has had an adequate opportunity to present its position.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondent’s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has provided evidence of a substantial number of trademark registrations for the term PLACACENTRO MASISA in Latin America, including Mexico. The trademark registrations in Mexico are dated May 28 and April 19, 2004. The Panel notes that these registrations predate registration of the disputed domain name on December 5, 2006. Complainant has used PLACACENTRO MASISA in connection with its building supply distribution business in Mexico and elsewhere. Complainant has demonstrated rights in the trademark PLACACENTRO MASISA.
The Panel considers that the combination term PLACACENTRO MASISA is inherently distinctive in the Spanish language. MASISA does not have an ordinary meaning. It is used by Complainant as a contraction of the terms “Maderas y Sinteticos Sociedad Anonima”. While the term PLACACENTRO may be translated as “center plate”, the use of the term by Complainant to identify a home improvement product distribution center in combination with the term MASISA is a comparatively unique combination of terms. This is not a combination which a third party would be likely to come upon inadvertently.
The disputed domain name, , is identical to Complainant’s trademark, save for the elimination of the space between terms and the addition of the generic top level domain (gTLD) identifier “.com”. There is no material difference between the disputed domain name and Complainant’s trademark for purposes of the Policy.
The Panel determines that Complainant holds rights in the PLACACENTRO MASISA trademark, and that the disputed domain name is identical to that trademark.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you 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 (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you 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 trademark or service mark at issue.” (Policy, paragraph 4(c))
Respondent makes two primary arguments in favor of rights or legitimate interests with respect to the disputed domain name. The first is that because Complainant has not registered the PLACACENTRO MASISA trademark in Spain, Respondent is free to use that term in the disputed domain name.
The absence of a complaining party’s rights in a trademark in a particular geographic territory may well facilitate the establishment by a respondent of rights or legitimate interests in a disputed domain name. If a respondent has itself established trademark rights within a particular country, or if it has been doing business in that country under the disputed domain name (or a corresponding business name), this will ordinarily (though not always) preclude a complaining party from establishing the lack of rights or legitimate interests on the part of the respondent. See, e.g., Lexicon Marketing Operating Luxembourg, S.A.R.L v. Facundo de Giorgio,WIPO Case No. D2006-0730, and decisions cited therein. Moreover, the absence of a complaining party’s trademark rights in a particular geographic territory may be an indication that a respondent did not have notice of a potential conflict with a trademark.
However, the Policy does not demand that a party asserting trademark rights in a disputed domain name have secured trademark rights in a particular geographic territory where the registrant of the disputed domain name is located. It is not sufficient for Respondent in this proceeding to refer to Complainant’s lack of trademark rights in Spain to establish Respondent’s rights or legitimate interests in the disputed domain name.
Respondent has not disputed that it initially registered the disputed domain name on behalf of a company organized and doing business in Mexico, where Complainant has in fact registered its trademark. Complainant makes out a prima facie case that Respondent’s client in Mexico did not establish rights or legitimate interests in the disputed domain name, inter alia, because Complainant already was doing business there under the PLACACENTRO MASISA trademark when Respondent registered the disputed domain name on behalf of its client. Complainant has asserted, without contradiction from Respondent, that the Mexican wood products company was prepared to voluntarily transfer the disputed domain name to Complainant, but could not do so because it had been registered by Respondent in its own name.
There is ample evidence on the record of this proceeding that Respondent did not purport to engage in the business of selling solar panels over the Internet prior to Complainant’s approach to Respondent’s client. There is, even now, little evidence on Respondent’s website addressed by the disputed domain name that Respondent is actually in the solar panel business. There is no evidence of specific products offered by Respondent, there is no business address, and the telephone number remains that of Respondent’s marketing firm. The Panel does not consider that Respondent has established a bona fide offer to sell goods prior to notice of this dispute, or that Respondent is engaged in fair use of the disputed domain name. There is no evidence, other than the belated establishment of the solar panel-related website, that Respondent has been known by the disputed domain name.
The Panel finds that Complainant has succeeded in establishing that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of bad faith (Policy, para. 4(b)). Among these circumstances are (1) that the domain name has been registered by a respondent “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 that complainant, for valuable consideration in excess of [respondent’s] documented out-of-pocket costs directly related to the domain name” (id., para. 4(b)(i)); (2) that a respondent has 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 [the respondent has] engaged in a pattern of such conduct” (id., para. 4(b)(ii)); (3) that a respondent has “registered the domain name primarily for the purpose of disrupting the business of a competitor” (id., para. 4(b)(iii)), and; (4) that a respondent “by using the domain name, … [has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [respondent’s] website or location of a product or service on [its] website or location” (id., para. 4(b)(iv)).
Respondent initially registered the disputed domain name on behalf of a client, a Mexican corporation, doing business in the same field as Complainant in Mexico. Complainant’s mark, as noted earlier, is distinctive in the Spanish language. It is highly unlikely that Respondent, on behalf of its Mexican client, registered that distinctive combination inadvertently. The Panel must draw reasonable inferences from the facts. Respondent and/or its client registered the disputed domain name with the intention to sell it to Complainant, or to gain a competitive advantage over a competitor by disrupting its business, or to use Complainant’s mark to divert Internet users to the products of Respondent’s client at the time of registration. It is not possible at this stage to determine precisely what motivated Respondent’s client and/or Respondent, but the fact that they registered the disputed domain name identical to Complainant’s distinctive mark in a country where Complainant was doing business, and initially used the disputed domain name to identify a website for Respondent’s client’s business, is sufficient to establish bad faith motivation. The fact that Respondent’s client subsequently elected to abandon this project does not relieve Respondent of the bad faith activities previously undertaken. The disputed domain name was registered, and was used, in bad faith within the meaning of paragraph 4(b) of the Policy.
7. Decision
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 name, , be transferred to the Complainant.
Frederick M. Abbott
Sole Panelist
Dated: December 7, 2007
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