WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Corporación Radio y Televisión Española, S.A. v. Pablo Palermo
Case No. D2008-0926
1. The Parties
The Complainant is Corporación Radio y Televisión Española, S.A., Madrid, Spain, represented by Elzaburu, Spain.
The Respondent is Pablo Palermo, San Isidro, Peru.
2. The Domain Name and Registrar
The disputed domain name is registered with Backslap Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2008. On June 19, 2008, the Center transmitted by email to Backslap Domains, Inc. a request for registrar verification in connection with the disputed domain name. On June 19, 2008, the Registar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 30, 2008, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 2, 2008. The Center verified that the amended 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 Respondent of the Complaint, and the proceedings commenced on July 4, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 24, 2008. The Respondent did not submit any Response. Accordingly, the Center notified Respondent's default on July 25, 2008.
The Center appointed Kiyoshi I. Tsuru as the sole panelist in this matter on August 6, 2008. 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 the holder, amongst others, of the following trademark registrations:
Trademark
Reg. No.
Class (Int'l)
Date of Registration
Country
RTVE
0921817
38
18/09/1980
Spain
ENTE PÚBLICO RADIO TELEVISIÓN ESPAÑOLA (R.T.V.E.)
1.098.124
41
04/11/1985
Spain
RTVE
1.099.354
41
04/11/1985
Spain
ENTE PÚBLICO RADIO TELEVISIÓN ESPAÑOLA (R.T.V.E.)
1.098.120
16
20/03/1986
Spain
ENTE PÚBLICO RADIO TELEVISIÓN ESPAÑOLA (R.T.V.E.)
1.098.121
28
20/06/1986
Spain
ENTE PÚBLICO RADIO TELEVISIÓN ESPAÑOLA (R.T.V.E.)
1.098.122
35
19/05/1986
Spain
RTVE
1.099.351
16
09/05/1988
Spain
RTVE
1.099.352
28
05/02/1987
Spain
RTVE
1.284.501
09
05/03/1990
Spain
RTVE
1.284.502
35
17/04/1990
Spain
RTVE
2.568.251
16, 38, 41
05/05/2003
EC
The disputed domain name was registered on November 11, 1999.
5. Parties' Contentions
A. Complainant
Complainant argues the following:
I. Identical or Confusingly Similar
That it owns numerous trademark registrations for RTVE.
That Complainant's trademarks and the disputed domain name are identical or quasi-identical.
That other panels have issued numerous decisions holding that the incorporation of the top level domains “.com”, “.net”, or “.org” are irrelevant when comparing a trademark and domain name (and cites RAIMAT, S.A. v. Antonio Casals,WIPO Case No. D2000-0143).
That there is a lack of distinctiveness of the top level domains “.com”, “.net” or “.org” (and cites Microsoft Corporation v. Amit Mehrotra,WIPO Case No. D2000-0053; The Hearst Corporation, Hearst Holdings, Inc., King Features Syndicate, Inc., and Fleischer Studios, Inc. v. Samuel Plasencia Patino, WIPO Case No. D2002-0193).
That the registration of a domain name that coincides with another party's trademark entails an infringement of the trademark owner's exclusive rights.
That the infringement is greater if the mark that has been appropriated as a domain name is well-known, as in the case of RTVE.
II. Respondent's Lack of Rights or Legitimate Interests in Domain Name
That given the circumstances, Respondent must hold no rights or legitimate interests in the domain name.
That numerous panels have held that it is the respondent who must attest to the existence of those legitimate rights and interests and not the Complainant, and cites Educational Testing Service v. Netkorea Co.,WIPO Case No. D2000-0087:
“It is relatively difficult for any complainant to prove beyond a shadow of doubt that a respondent has no rights or legitimate interests in a domain name. By and large, such information is known to and within the control of the respondent. Accordingly, the burden on a complainant in respect of this element must, by necessity, be relatively light. In any event, Paragraph 4(c) of the Policy gives respondents ample opportunity to rebut any evidence tendered by complainants”.
That paragraph 4(c) of the Policy sets out the various ways in which respondents can prove that they hold rights or legitimate interests in their domain names.
That mere registration of a domain name does not establish rights in it (citing Potomac Mills Limited Partnership v. Gambit Capital Management,WIPO Case No. D2000-0062).
That Respondent does not hold a trademark or trade name for the term RTVE and has not been authorized to register the domain names in dispute, and cites Société Air France v. Bing G Glu,WIPO Case No. D2006-0834:
“The trademark “AIR FRANCE” has been known for a significant period of time and the Complainant has not granted any license or otherwise permitted the Respondent to use its trademark or to apply for any domain names incorporating the said trademark. Moreover, the Respondent is not known by the domain names at stake.”
That Respondent is not commonly known by the domain name. That registration of a domain name by someone who is not commonly known by said name, can confuse or mislead consumers, and cites NAF Case No. FA444510 :
“The Complainant states that the Respondant is not commonly known by the domain name. According to the domain name's WHOIS information the Respondent is known as “MCM Tours, Inc.” See e.g. Compaigne de Saint Gobain v. Com-Union Corp.,WIPO Case No. D2000-0020 (WIPO Mar. 14 2000) (finding no rights or legitimate interest where the Respondent was not commonly known by the mark and never applied for a license or permission for the Complainant to use the trademarked name); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy 4(c)(ii) to require a showing that one has been commonly known by the domain name prior to registration of the domain name prevail”).
That the choice of domain names cannot be coincidental. That this was established by certain panels in different proceedings (and cites Recoletos Compañía Editorial, S.A. v. R, WIPO Case No. D2000-1765; RAI Radiotelevisione Italiana S.p.A. v. Freedomain E-Solutions LLC,WIPO Case No. D2005-0491; and, British Broadcasting Corporation v. Data Art Corporation / Stoneybrook, WIPO Case No. D2000-0683:
“The disputed domain name has been registered since 1997, decades after the first use by the complainant of the trademark BBC NEWS. It is inconceivable that the Respondent was not fully aware of the fame of the marks BBC and BBC NEWS when registering the disputed domain name, especially having regard to the other domain names incorporating slight mis-spellings of other famous trademarks also registered by the respondent as domain names. The respondent does not dispute complainant´s claim of fame.”
That Respondent, did not reply to the cease and desist letter sent by Complainant (and cites The Iams Company v. José Manuel Touriño Domínguez, WIPO Case No. DES2007-0031; and, Stanworth Development Limited v. Mike Morgan (290436), WIPO Case No. D2006-0230:
“The Panel notes that Respondent was sent two cease and desist letters and was also sent a copy of this Complaint but has not taken opportunity to present any argument on his behalf. The Panel finds that the trademark RIVER BELLE is sufficiently distinctive on its merits for the Panel to need to consider the possibility of coincidence.
Since the Respondent was informed of the Complainant´s claims in relation to the trademark and made no attempt to offer any explanation for his adoption of so similar a domain name for use in relation of the services of the same description, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.”
III. Registered and Used in Bad Faith
That a complete lack of rights or legitimate interests by Respondent clearly shows that the domain name has been registered and is used in bad faith.
That factual grounds of the Complaint demonstrate the bad faith in which Respondent acted by registering and using the conflicting domain name.
That the mere fact that the domain names have been registered in bad faith, without rights or legitimate interests implies use in bad faith. (and cites J. García Carrión, S.A. v. Mª José Catalán Frías,WIPO Case No. D2000-0239).
That rerouting the domain name to a domain park or not giving a website content are undisputable signs of use that goes against good faith (and cites respectively, The British Broadcasting Corporation v. NA,WIPO Case No. D2008-0264 and Société Air France v. Bing G Glu,WIPO Case No. D2006-0834:
“No apparent effort has been made to use the subject domain name for any legitimate purpose. The subject domain name is used simply to attract those who might be interested in the Complainant´s “BBC World Service”, for one reason or another, in order to divert them to other products and suppliers which, it may be assumed, have pay-per-click arrangements by which whomever it is that controls the subject domain name will derive income.”
“The Complainant has submitted a prima facie case that the Respondent uses the disputed domain name in order to divert Internet users to parking webpages on which several hyperlinks are displayed many of which consisting of results in the field of tourism and travel (Annex H to the Complaint); by clicking on these hyperlinks, users are directed to competing third-party commercial websites (Annex I to the Complaint) whose said hyperlinks generate revenue to the benefit of the Respondent through a “pay per click” domain parking solution.”
That not replying to a cease and desist letter has on the other occasions also been considered as registration and use in bad faith, according to Soria Natural, S.A. v. Vicenc Roig Ribas, WIPO Case No. D2004-0803; and, Gaggia S.p.A. v. Yokngshen Kliang, WIPO Case No. D2003-0982:
“This is actually what happened at the end of 2002, leading the Complainant to write to the Respondent to inform about its rights in the trademark and to invite the Respondent to explain the reasons for the registration of the disputed domain name.
When receiving such notice, good faith requires a response. Instead, the Respondent did nothing. Although it had actual knowledge of the Complainant´s rights in the corresponding trademark, it did not reply and did not bother transferring or canceling the disputed domain name.
In the Panel´s eye, these circumstances are indicatives of bad faith inactive use.”
That the bad faith of Respondent is likewise revealed in his attitude, which contrasts radically to the loyalty and care that must preside in the conduct of any business.
That a simple Internet search would have sufficed for Respondent to become aware of Complainant's marks, their reputed character and who should be the legitimate owner of the domain name . The following decisions were cited:
Earl G. Graves Jr. v. , The O Vibe,WIPO Case No. 2008-0286:
“A number of cases have found common law trademark rights in a complainant´s name if the name is used in trade or commerce. See e.g. Soin International v. Michael W. Solley,WIPO Case No. D2007-0094. (March 7, 2007). Here, Complainant has provided extensive evidence that his name has become widely known in connection with his business endeavors. Particularly persuasive are the thousands of Google search results linked with his name and business, as well as the webpages associated with the disputed domain name itself: in the “notes” to the listing of the disputed domain name appears “President of Black Enterprise Magazine”, and the page also lists names of other famous African Americans. Thus, the Panel finds that Complainant has established rights in the mark EARL G. GRAVES JR.”
2018120 Ontario Inc. dba BattleGoat Studios v. Port Media,WIPO Case No. 2006-0120:
“The Complainant has been using the name SUPREME RULER for over twenty years. The Google searches by the Complainant and the Panel show that the term “Supreme Ruler” is very widely known on the Internet in connection with the Complainant´s Computer games. Therefore, despite the fact that it is composed of two common words and that the term itself could, in some instances, be viewed as descriptive, the Panel is satisfied that, particularly with regard to Internet users, the term has acquired a secondary meaning. The domain name uses the exact name of the Complainant´s computer game. Therefore, the Panel holds that the Complainant´s rights are sufficient to satisfy the first element of paragraph 4(a) of the Policy”.
B. Respondent
Respondent did not file a Response or otherwise reply to Complainant's contentions.
6. Discussion and Findings
In accordance with the Policy, paragraph 4(a), the Complainant must prove that:
(i) the domain name in question 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.
In the administrative proceeding, Complainant must prove that each three of these elements are present.
As Respondent has failed to submit a Response to the Complaint, the Panel may choose to accept as true all of the allegations of the Complaint (Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk,WIPO Case No. D2002-0487; Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009).
A. Identical or Confusingly Similar
Complainant has submitted evidence showing the existence of trademark registrations for RTVE and ENTE PÚBLICO RADIO TELEVISIÓN ESPAÑOLA (R.T.V.E.), together with evidence of promotional materials, sponsorships, productions, programs and advertisements regarding said trademarks. Most of these trademark registrations predate the date of registration of the domain name (see point 4, supra).
The disputed domain name is identical to Complainant's trademark RTVE. The addition of the generic top-level domain “.com” is immaterial under the Policy. To carry into effect the similarity analysis, a Panel must not take into account the generic top-level domain (gTLD) “.com”, because such gTLD has no legal significance. See Ahmanson Land Company v. Vince Curtis, WIPO Case No. D2000-0859, (citing in turn Monty and Pat Roberts, Inc. v. J. Bartell, WIPO Case No. D2000-0300; J.P. Morgan & Co., Incorporated and Morgan Guaranty Trust Company of New York v. Resource Marketing, WIPO Case No. D2000-0035; see also Pomellato S.p.A. v. Richard Tonetti,WIPO Case No. D2000-0493; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 and, Sony Kabushiki Kaisha also trading as Sony Corporation v. Inja, Kil, WIPO Case No. D2000-1409).
The first requirement of the Policy has been met.
B. Rights or Legitimate Interests
The following are examples of circumstances where a respondent may have 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.” (Policy, paragraph 4(c)).
Respondent has not been granted any authorization to register the disputed domain name (See Société Air France v. Bing G Glu, WIPO Case No. D2006-0834).
Respondent has not submitted evidence showing its preparations to use the disputed domain name with a bona fide offering of goods or services. Respondent does offer some products and services through the website to which the disputed domain name resolves. Said offering of products and services cannot be considered bona fide or legitimate.
The record does not contain any evidence showing that Respondent has been commonly known as .
No evidence has been submitted to prove that Respondent is making a legitimate noncommercial or fair use of the domain name. In fact, Complainant has submitted evidence, which has not been rebutted by Respondent, showing that the disputed domain name has been set to resolve to a pay-per-click domain park, the initial page of which offers different products and services, under the following titles: “Apartments in Spain”, “Villa Holiday”, “Villas”, “Rent Apartment”, “Property”, “Holiday Apartment”, “Property for Sale”, “Holiday Rental”, “Accommodation”, “Private Villas”.
Moreover, said initial page features a paragraph which reads: “Welcome to . Search for goods and services on Apartments in Spain, Villa Holiday, Villas, Rent Apartment and more.”
Respondent's conduct generates a risk of confusion regarding the existence of an apparent association, origin or sponsorship of Complainant, in connection to the domain name, website, or products and services of Respondent. This cannot be legitimate (See, mutatis mutandis, Philip Morris Incorporated v. Alex Tsypkin,WIPO Case No. D2002-0946).
The second requirement of the Policy has been met.
C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the following circumstances shall be evidence of registration and use in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name 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 your documented out-of-pocket costs directly related to the domain name; or
(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; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
According to the record, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website, by creating a likelihood of confusion with Complainant's trademark RTVE. This conduct falls within the scope of Paragraph 4(b)(iv) of the Policy. See Hewlett-Packard Company v. NA, NAF Case No. FA154141 and Savin Corporation v. Cal Toner c/o Domain Manager, NAF Case No. 230934.
The evidence submitted by Complainant suggests that the choice of this domain name was not coincidental. The domain park to which the disputed domain name resolves, features services that are connected to Spain. This cannot constitute good faith under the Policy. See Recoletos Compañía Editorial, S.A. v. R, WIPO Case No. D2000-1765; RAI Radiotelevisione Italiana S.p.A. v. Freedomain E-Solutions LLC,WIPO Case No. D2005-0491; and, British Broadcasting Corporation v. Data Art Corporation / Stoneybrook, WIPO Case No. D2000-0683. See also, mutatis mutandis, Guerlain S.A. v. HI Investments,WIPO Case No. D2000-0494.
The third requirement of the Policy has been met.
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.
Kiyoshi I. Tsuru
Sole Panelist
Dated: August 20, 2008
Full & Egal Universal Law Academy