WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dori Media International GmbH v. Sikreto LLC
Case No. D2007-1525
1. The Parties
The Complainant is Dori Media International GmbH of Zurich, Switzerland, represented by Keats McFarland & Wilson, LLP, United States of America.
The Respondent is Sikreto LLC of Las Vegas, Nevada, United States of America.
2. The Domain Name and Registrar
The disputed Domain Name is registered with Intercosmos Media Group, Inc. d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 16, 7. On October 18, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name at issue. On October 18, 2007, the Registrar 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 an amendment to the Complaint on November 6, 2007. 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 December 15, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 5, 2007. The Response was filed with the Center on December 5, 2007.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on December 13, 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.
4. Factual Background
The Complainant is a private company organized under the laws of Switzerland and based in Zurich. The Complainant states that it financed the original production of a popular dramatic television series (“telenovela”) in Argentina named “Rebelde Way”. The Complainant states that it held the worldwide distribution rights to this television program from the beginning and later acquired additional rights, including copyright, in the program.
The Argentinean telenovela was first broadcast in 2002. A Mexican remake of the telenovela, under the name “Rebelde”, was produced by Televisa under a license from the Complainant. The Mexican telenovela was first broadcast in October 2004. The Complainant furnished ample evidence that both the Argentinean and Mexican versions of the series were highly successful, and they have also been broadcast or otherwise distributed in the United States, Spain, and many other countries.
The telenovela produced in both countries could be characterized as a “teen soap opera” featuring students in an elite private school. The story line of the Mexican telenovela included a student musical band, which performed a musical number called “Rebelde”. The recording of this musical number became a hit single, and the musical group, under the name “RBD”, went on to produce an album and perform in concert tours in North and South America, Europe, and Asia.
The Complainant claims common law rights in the REBELDE and RBD marks. It applied in February 6 for United States trademarks in REBELDE (the applications are still pending), and it has obtained or applied for numerous design marks incorporating the word “REBELDE” in Bolivia, Brazil, Chile, Colombia, Costa Rica, Dominican Republic, Ecuador, El Salvador, Guatemala, Mexico, Panama, Peru, Paraguay, and Venezuela. The earliest registration granted appears to be Mexican Trademark Number 851976 dated September 21, 2004, for a design mark featuring the word “REBELDE”.
The Domain Name was registered on December 23, 1999. Mr. McCaw, an individual residing in Las Vegas, is listed as the administrative and technical contact, and in subsequent correspondence he has consistently identified himself as the owner of the Domain Name and the person who registered it in 1999. He does not explain the nature or role of the named registrant, Sikreto LLC. Sikreto LLC does not appear as a registered business entity in the online database operated by the Nevada Secretary of State. For purposes of this decision, therefore, the Panel will treat Sikreto LLC as an alter ego for Mr. McCaw, referring to McCaw himself as “the Respondent”.
The Respondent states that he registered and used the Domain Name, which is a common Spanish word meaning “rebel” or “rebellious”, originally to host domain names for Filipino Internet users. He says he first parked the domain with S in April 6, thereafter earning a modest share of pay-per-click advertising revenues generated on the website hosted by S and associated with the Domain Name.
A review of archived pages, found through the Wayback Machine feature of the website operated by the Internet Archive , shows that in 2000 the website to which the Domain Name resolved advertised both free and premium email addresses and included the following text:
“Welcome to R
“R is the first website of its kind to offer 300 FREE web-based Filipino & Spanish email addresses. Your R email account is easy to set-up, private & secure, available worldwide, and it's yours for life! Click here for more great reasons to open your R email account. R -- Rebel against boring email addresses!”
Later versions of the Respondent’s website featured Filipino discussion forums, as well as advertising for a variety of computer games, electronics, and other products.
References to the REBELDE telenovelas and the RBD musical group do not appear on the archived web pages until April 2006, when the Domain Name was parked with S (“Sedo”). From that time forward, the website displayed only advertising links, and these included links relating to the REBELDE telenovelas and the RBD musical group, presumably generated by Sedo’s advertising search software as described on Sedo’s website at “www.s”. The website included a notice typically found on Sedo’s domain parking websites: “This domain may be for sale by its owner!”
In early 2007, the Complainant learned that the Domain Name was associated with a domain parking website displaying pay-per-click advertising links, including links to websites relating to the REBELDE telenovelas and RBD concerts, as well as some links to “adult-content” websites. Counsel for the Complainant sent the Respondent a cease-and-desist letter in February 2007. This spawned a series of inconclusive communications between counsel for the Complainant and counsel for the Respondent over the next several months, followed by the current UDRP Complaint.
The Respondent reported to the Center on December 5, 2007 that he had removed the Domain Name from Sedo’s domain parking service. The Domain Name does not currently resolve to an active website.
5. Parties’ Contentions
A. Complainant
The Complainant asserts that the Domain Name is identical or confusingly similar to its common-law and registered REBELDE mark and that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant argues that the Respondent registered and used the Domain Name in bad faith, “by exploiting the public recognition and famousness of the mark for his own profit”.
B. Respondent
The Respondent denies such intent and points out that he registered the Domain Name before the Complainant’s mark came into existence. He disclaims responsibility for the content of the domain parking website. He asks that the Complaint be dismissed since he has removed the Domain Name from the domain parking service. In an October 23, 2007 email to the Center, the Respondent also charged the Complainant with attempted reverse domain name hijacking.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules,
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
A. Request for Additional Time or Supplemental Filing
The Respondent, explaining that he was traveling in Southwest Asia when the Complaint was launched, requested additional time to prepare a Response and to obtain assistance from counsel. He nevertheless responded substantively to the Complaint by email, and the record includes earlier correspondence between his counsel and counsel for the Complainant.
As detailed below, the Panel finds the record sufficient for a just decision in this proceeding. Accordingly, the request for additional time or permission to submit supplemental filings is denied.
B. Identical or Confusingly Similar
It appears from the record that the Complainant has not yet obtained a registered trademark for REBELDE as a standard-character mark. It does hold registered trademarks in several countries for design marks in which the word “REBELDE” is the prominent distinctive feature. The Complainant also claims common-law rights in the REBELDE mark in the United States, where it applied for registered trademarks in 2006. The Complainant has furnished evidence that the REBELDE mark is familiar to a substantial audience in the United States, chiefly through distribution of the Mexican telenovela, RBD concerts, RBD musical recordings, and the sale of clothing and other products branded with the REBELDE mark.
The Respondent challenges the Complainant’s claim to unique rights in a Spanish dictionary word and points out that many other companies and products also feature the word “rebelde”. The Complainant’s use of the word, even without accompanying design elements, may nevertheless have acquired a secondary meaning that is distinctive and protectable under trademark law in the United States and possibly other jurisdictions. This issue will presumably be decided shortly by the United States Patent and Trademark Office, which published the Complainant’s United States trademark applications for opposition in July 2007.
The Domain Name is identical to the Complainant’s REBELDE mark, and the Panel finds sufficient evidence of acquired distinctiveness to hold that the Complainant has rights in the mark for purposes of the Policy, paragraph 4(a)(i). The question of priority in time is not relevant to this Policy requirement; it is necessary only to show that the Complainant currently has legally protectable rights in the mark on which the Complaint is grounded. Thus, the Complainant has satisfied the first element of the UDRP Complaint.
C. Rights or Legitimate Interests
The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which a respondent could demonstrate rights or legitimate interests in a contested domain name:
“(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.”
The Respondent claims that he selected the Domain Name in 1999 for use in providing email accounts for Filipinos, who were then largely dependent on Yahoo! for email accounts. He points out that “rebelde” is the word used for “rebel” in Filipino, the official national language of the Republic of the Philippines. (Filipino is based on Tagalog and sometimes spelled “Pilipino”.) The word is derived from Spanish and dates from the Spanish colonial period in the Philippines. The Respondent says that he wanted to suggest with the Domain Name that it was possible to “rebel” against Yahoo! email. The 2000 website text quoted above carries a similar message: “R -- Rebel against boring email addresses!”
The Respondent later added advertising to the website and ultimately, in 2006, abandoned his website and parked the Domain Name with Sedo to generate revenue from third-party advertising links. The parking website includes an advertisement that the Domain Name may be available for sale, because the Respondent is now willing to consider offers to purchase the Domain Name. But he affirms that this was not his purpose for registering the Domain Name in 1999, much less to target the Complainant’s marks that were not then in existence.
The archived pages of the website to which the Domain Name historically resolved support the Respondent’s account. The website originally concerned only email accounts, aimed at the Filipino market, and later added both advertising and user forums designed for Filipino Internet users. Only in April 2006, more than six years after the Domain Name was registered, does it appear that the Respondent parked the Domain Name with an Internet advertising service, which then displayed links relevant to the Complainant as well as to a wide variety of third-party commercial products and services.
All of these activities occurred before any notice of the current dispute. Thus, the Respondent’s conduct would appear to be “in connection with a bona fide offering of goods or services”, unless the evidence indicates that his actual motivation was a bad-faith intent to exploit the Complainant’s REBELDE mark, which could not be considered a bona fide commercial interest. That question is better addressed below, in examining the bad-faith element of the UDRP Complaint.
D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy obliges the Complainant to establish that “the Domain Name has been registered and is being used in bad faith”. Thus, it expressly concerns the Respondent’s likely intentions at the time of registration as well as subsequently.
Even without direct evidence of original intent, a respondent’s motivations at the time of registration can often be inferred from the respondent’s later conduct. Thus, paragraph 4(b), which provides a non-exhaustive list of circumstances that indicate bad faith, includes the following:
“(iv) 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.”
Here, the Complainant’s bad-faith arguments refer only to the use of the Domain Name, beginning in April 2006, to resolve to a domain parking website advertising the Domain Name for sale and featuring links to a variety of third-party advertisers. The Complainant relies on paragraph 4(b)(iv), asserting that the Respondent has used a Domain Name identical or similar to the Complainant’s REBELDE mark to attract Internet users and potential purchasers of the Domain Name, for the Respondent’s commercial gain.
The Complainant does not squarely address the Respondent’s use of the Domain Name for more than six years before he parked it with Sedo, nor his stated reasons for registering the Domain Name in 1999, even though much of this was disclosed in earlier correspondence between counsel for the Complainant and counsel for the Respondent. The fact remains that the Domain Name is a dictionary word in Filipino and Spanish, and the Respondent demonstrably operated a website offering email accounts and other services targeted to a Filipino and Spanish audience for years before the Complainant’s mark was established. Thus, even if the Complainant proved that the Respondent acted irresponsibly in 2006 and 2007 in allowing an automated Internet advertising service to use the Domain Name in a way that arguably exploited the fame of the Complainant’s REBELDE mark, it seems impossible for the Complainant to establish that this was the Respondent’s intent when he registered the Domain Name in 1999. See, e.g., Digital Vision, Ltd. v. Advanced Chemill Systems,WIPO Case No. D2001-0827 (the Policy requirement is conjunctive, and this element of the complaint is not established without a showing of bad-faith registration as well as subsequent use in bad faith).
The most obvious problem with the Complainant’s bad-faith argument is timing. The Respondent registered the Domain Name in December 1999. There is no evidence in the record that the Complainant obtained a registered trademark in any country, even for a design mark, before September 2004 (in Mexico). The Complainant claims common-law rights in the REBELDE mark without indicating when and how those rights first arose. But in any event, there is nothing in the record to suggest that such common-law rights could have come into existence before 2002 at the earliest, when the original Argentinean telenovela “Rebelde Way” was launched. This was more than two years after the Respondent registered the Domain Name. Further, there is no evidence that the Respondent had advance knowledge of the Complainant’s mark. See, e.g., World Wrestling Entertainment, Inc. v. DIR Enterprises, LLC,WIPO Case No. D2006-1605; General Growth Properties, Inc. Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Centre Online,WIPO Case No. D2003-0845; Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc.),WIPO Case No. D2003-0320 (cases in which the Panel found bad faith registration because the respondent had prior knowledge of a mark before it was first used in commerce or mentioned in an application for trademark registration).
It is simply not credible that the Respondent in the United States “targeted” the Complainant’s mark, as the Complainant claims, when the Respondent registered the Domain Name years before the mark was first used in Argentina and Mexico, and even longer before the mark first appeared in the United States.
The Complainant cites several UDRP decisions for the proposition that “it is not necessary under paragraph 4(a)(i) for a complainant to demonstrate that its rights in a mark arose prior to a respondent’s registration of a confusingly similar domain name”. That is true, because paragraph 4(a)(i), as mentioned above, requires only that a UDRP Complaint be grounded on current trademark rights. However, the issue of priority is often material to the evaluation conducted under paragraphs 4(a)(ii) (the Respondent’s rights or legitimate interests) or 4(a)(iii) (bad faith). In most cases, it is logically impossible to establish bad-faith targeting of a complainant’s mark when the respondent registered the disputed domain name before the complainant had any relevant trademark rights. In the current case, how can it possibly be imagined that in 1999 the Respondent foresaw that, some years in the future, the Complainant would succeed in establishing a commercial secondary meaning in a dictionary word?
The Complainant also argues that the Respondent’s registration of the Domain Name precludes the Complainant “from fully commercially exploiting its own Mark”, citing Panavision v. Toeppen, 141 F.3d 1316, 1325 (USCA 9th Cir. 1998) and UDRP decisions. The Policy recognizes such an instance of bad faith in paragraph 4(b)(ii):
“(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 . . .”
The Policy requires a “pattern” of such conduct, which the Complainant has failed to demonstrate with respect to this Respondent. Moreover, it is nonsensical to assert that the Respondent registered the Domain Name in order to prevent the Complainant from obtaining a domain name corresponding to a trademark that did not even exist at the time.
The Complainant may have enforceable rights under trademark and related laws in one jurisdiction or another, but it has not established bad-faith registration and use of the Domain Name as required to obtain relief under the UDRP.
E. Reverse Domain Name Hijacking
The Respondent raised in an email to the Center the issue of reverse domain name hijacking, a point that was also mentioned in earlier correspondence from the Respondent’s counsel. This is defined in the Definitions section of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
Paragraph 15(e) of the Rules provides as follows:
“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.”
The Rules do not provide for monetary remedies or specific relief in such a case.
The Panel finds no evidence that the Complaint was brought “primarily to harass the domain-name holder”. Rather, the Complaint appears to represent an aggressive attempt to obtain what is potentially the most valuable domain name that could be associated with the newly famous REBELDE mark.
The Panel does conclude, however, that this attempt was made in bad faith within the meaning of paragraph 15(e) of the Rules. The corporate Complainant, represented by reputable intellectual property counsel in Beverly Hills, California, claimed bad-faith registration and use of the Domain Name despite evidence of years of legitimate use and the glaring fact that the Complainant had no trademark rights at the time the Respondent registered the Domain Name in 1999. It is surprising and disappointing that experienced counsel would prosecute a UDRP complaint with such obvious defects, and it suggests overreaching on the part of the Complainant.
Accordingly, the Panel finds that the Complaint represents an attempt at reverse domain name hijacking.
7. Decision
For all the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Sole Panelist
Dated: December 27, 2007
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