WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Sociedad Administradora de Fondos de Pensiones y Cesantias PORVENIR S.A. v. Brendhan Hight Case No. D2009-1240 1. The Parties
The Complainant is Sociedad Administradora de Fondos de Pensiones y Cesantias PORVENIR S.A. of Bogotá, Colombia (the “Complainant”), internally represented.
The Respondent is Brendhan Hight of Nevada, United States of America (the “Respondent”), represented by John Berryhill, Ph.d., Esq., United States of America. 2. The Domain Name and Registrar
The disputed domain name is (the “Domain Name”).
The Domain Name is registered with Moniker Online Services, LLC (“Moniker”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 18, 2009. On the same date, the Center transmitted by email to Moniker a request for registrar verification in connection with the Domain Name. On September 19, 2009, Moniker transmitted by email to the Center its verification response confirming that the Respondent was listed as the registrant of the Domain Name and providing the corresponding contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 September 24, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 14, 2009. The Response was filed with the Center October 14, 2009.
The Center appointed Albert Agustinoy Guilayn, Fernando Triana and Tony Willoughby (the “Panel”) as panelists in this matter on October 27, 2009. The Panel finds that it was properly constituted. Each member of 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.
On November 18, 2009 the Panel notified to the Center that it would be extending the term for issuing its decision until November 25, 2009. 4. Factual Background A. The Complainant
The Complainant is a Colombian company incorporated in 1991, specialised in the provision of pension funds managing services. Apart from Colombia, at present the Complainant also operates in other Latin American jurisdictions such as Ecuador, Peru, Paraguay, Dominican Republic, Costa Rica and Venezuela.
The Complainant is the owner of a number of Colombian trademark registrations totally or partially based on the trademark PORVENIR such as, for example, the following ones:
- Trademark No. 92 350679 PORVENIR, registered since November 15, 1991 under Class 35 of the International Nomenclator;
- Trademark No. 99 050887 PORVENIR, registered since August 11, 1999 under Class 16 of the International Nomenclator;
- Trademark No. 99 050890 PORVENIR, registered since August 11, 1999 under Class 35 of the International Nomenclator;
- Trademark No. 99 050891 PORVENIR, registered since August 11, 1999 under Class 36 of the International Nomenclator;
- Trademark No. 00 013653 PORVENIR, registered since February 28, 2000 under Class 36 of the International Nomenclator;
- Trademark No. 00 013655 PORVENIR, registered since February 28, 2000 under Class 35 of the International Nomenclator;
The Complainant has also registered numerous trademarks based on the name PORVENIR in different Latin American jurisdictions like Peru, Ecuador or Bolivia.
The Complainant has provided evidence that its PORVENIR trademarks have become well-known in Colombia and in Ecuador, their notoriety having been recognized by the courts of those jurisdictions. B. The Respondent
Pursuant to the information included in the Response, the Respondent is an employee of a United States (“US”) company named MDNH, Inc. on behalf of which he registered and manages the Domain Name.
Said company focuses its activities in the registration and operation of a large number of domain names consisting in common words and phrases in several languages. In accordance with the explanations contained in the Response and in the website of MDNH, Inc. (“”), such domain names are used for advertising purposes, being connected to websites where numerous advertisements are published. Those advertisements are placed pursuant to keyword based advertising techniques, offering different publicity contents depending on the words contained in the domain name at issue.
In particular, MDNH, Inc. owns and operates quite a number of domain names based on generic Spanish words or phrases such as (“salud” meaning “health” in Spanish), ( “deportes” meaning “sports” in Spanish), (“mujer” meaning “woman” in Spanish), (“futbol” meaning “football” in Spanish) or (“bromas” meaning “jokes” in Spanish).
In addition to the use of domain names for advertising purposes, MDNH, Inc. does also trade with some of them, publicly offering them for sale. As a matter of fact, a significant number of the domain names registered and managed by said company (e.g. , , or ) are connected to websites which include a section offering the possibility to any Internet user to make an offer for purchasing the domain name at issue. Moreover, the company's website offers a vast catalogue of domain names that are publicly offered for sale. C. The Domain Name
According to the WhoIs database, the Domain Name was registered by the Respondent on May 5, 2005. Nevertheless, the Response indicates that it was originally registered in 2002 by a US company named Ultimate Search, Inc. That company was acquired in February 2005 by Marchex Inc., a public US corporation which is the parent company of MDNH, Inc. (where the Respondent works). As a consequence of that acquisition, the Domain Name was purchased among thousands of others.
The Domain Name is connected to a website with a large number of links structured in different categories of products and services. By clicking any of said links, the user is directed to a web page where a number of new advertisements and commercial links are included. According to the explanations given in the Response, the use of the Domain Name is based on the provision of automated advertising links to goods and services relating to the Spanish verb “venir” (to come, in Spanish), the phrase “por venir” (still to come, in Spanish) and the word “porvenir” (future, in Spanish).
In addition, the homepage of the website connected with the Domain Name includes the sentence “This domain may be for sale” jointly with a hypertext with the wording “Click here for more information”. When this latter text is clicked, the user is directed to a webpage managed by MDNH, Inc. hosting an electronic form by means of which an offer can be transmitted to said company in order to purchase the Domain Name. D. Contacts between the parties in connection with the Domain Name
On August 28, 2009 the Complainant made contact with the Respondent in order to show its interest in the purchase of the Domain Name. The Respondent invited the Complainant to make an offer, so the Complainant made a bid of USD 1,000. The Respondent rejected that figure and had no further contact with the Complainant.
According to information provided in the Complaint, the Respondent had rejected another similar offer filed by a third party in June 2009, indicating that the Domain Name was not for sale but should someone offer more than USD 100,000 the Respondent would consider the possibility of selling the Domain Name. 5. Parties' Contentions A. Complainant
The Complainant contends in the Complaint that:
- It is a Colombian company that, since its incorporation in 1991, has been providing pension funds management services in different jurisdictions of Latin America under the brand PORVENIR. Given the significant investment made in advertising its brand as well as the large number of customers it has, the Complainant asserts that its PORVENIR trademarks have become well-known, having been declared so by the courts of Colombia and other jurisdictions such as Ecuador;
- The Respondent does not hold any right or legitimate interest on the Domain Name, since he has not registered any trademark or distinctive sign based on the name “Porvenir”. The Complainant indicates that the Respondent is actually the registrant of more than 110,000 domain names that contain automatic-generated advertising materials. Moreover, the Complainant indicates that a vast majority of the domain names registered by the Respondent are publicly offered for sale. Taking into account these facts, the Complainant concludes that the Respondent's real activity is the purchase and sale of domain names for profit, an activity that cannot be considered legitimate at all;
- The Respondent is not making a real use of the Domain Name. On the contrary, the Complainant considers that the Respondent has connected it to an “empty” website where the only contents offered are automatically generated advertisements;
- The Respondent uses the Domain Name for publicly offering it for sale, a behaviour that can only be defined as made in bad faith. In this sense, the Complainant considers that the Respondent showed a clear speculative will when it rejected an offer of USD 1,000 for the transfer of the Domain Name and, as a matter of fact, the Respondent is trying to use the Complainant's notorious PROVENIR trademarks for speculating with the Domain Name, as it is based on the Complainant's brand; and
- Taking into account all the above, the Domain Name should be transferred to the Complainant. B. Respondent
The Respondent contends in the Response that:
- The Domain Name is based on a Spanish dictionary word that can be translated as “future”;
- While the Respondent has no reason to dispute the Complainant's rights in its PORVENIR trademarks, such a word has a generic sense in Spanish and the Respondent registered the Domain Name precisely bearing in mind the generic nature of that Spanish word. The Respondent states that it had no prior knowledge of the Complainant, nor of its PORVENIR trademarks. Moreover, the Respondent considers that said trademarks may be well-known in Colombia and South and Central America in connection with the Complainant's services, but the Respondent considers that such trademarks do not confer to the Complainant a monopoly or exclusive right in a dictionary word;
- The Respondent works for a company which manages a vast portfolio of domain names mainly for advertising purposes. From the Respondent's perspective, the key issue is that all the domain names registered by the said company consist of common words or phrases in different languages (including Spanish) and, therefore, the use of such domain names for advertising purposes should not be perceived as a breach of the Complainant's trademarks but as fair commercial use of a generic dictionary word;
- The Respondent's registration of the Domain Name was far from being a specific intent directed toward the Complainant and arising from rights known by the Respondent to belong to the Complainant at the time the Domain Name was registered. On the contrary, according to the Respondent, had a search of dictionaries and trademark offices' records been made at the moment of registration of the Domain Name (or at the moment it was transferred as a consequence of the acquisition of its original registrant by Marchex, Inc.), it would have resulted in the knowledge that “porvenir” is a Spanish dictionary word and that the Complainant is one of multiple parties which claim rights in that name for particular services not directly related to the meaning of that word;
- The Respondent did not offer the Domain Name for sale in bad faith but, since the company he works for does not generally sell domain names, it gave a high monetary figure in response to the Complainant's offer of purchase of the Domain Name as a deterrent to frivolous inquiries. In this respect, the Respondent contends that this is the Respondent's regular practice in order to avoid the torrent of irresponsible communications that MDNH, Inc. receives on a daily basis for the purchase of domain names held by said company. Besides, the Respondent states that the correspondence relied upon by the Complainant demonstrates that the Respondent was not trying to sell the Domain Name to the Complainant or a competitor.
- For the foregoing reasons, the Complaint should be denied. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove to the Panel that the following three circumstances are present in this case in order to obtain the transfer of the Domain Name:
(a) that the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(b) that the Respondent does not have rights or legitimate interests in respect of the Domain Name; and
(c) that the Domain Name has been registered and is being used by the Respondent in bad faith.
These matters are analyzed below. A. Identical or Confusingly Similar
The first element required by the Policy is that the Domain Name and the PORVENIR trademarks owned by the Complainant are identical or confusingly similar.
In the present case, the only difference existing between several of the trademarks owned by the Complainant and the Domain Name consists in the inclusion of the “.com” suffix in the latter. However such a difference is directly derived from the current technical structure of the Domain Name System (DNS) and, consequently, it should not be considered as a relevant difference between the Domain Name and the Complainant's “PORVENIR” trademarks.
Many decisions adopted under the Policy have taken this approach (see, for example, New York Life Insurance Company v. Arunesh C. Puthiyoth,WIPO Case No. D2000-0812 or A & F Trademark, Abercrombie & Fitch Store, Inc., Abercrombie & Fitch Trading Co., Inc. v. Party Nigh Inc.,WIPO Case No. D2003-0172) and, consequently, the Panel considers that the Complainant has fulfilled the first of the conditions required by the Policy.
Moreover, the Panel notes that the Respondent does not dispute that the Domain Name is identical or confusingly similar to the Complainant's trade mark. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires that the Respondent does not have rights or legitimate interests in respect of the disputed Domain Name. In this regard, paragraph 4(c) of the Policy foresees a set of circumstances in which the Respondent may be considered as having said rights or interests. Those circumstances are:
- The Respondent has used the Domain Name or has made demonstrable preparations for its use in connection with a bona fide offering of goods and services before any notice of the dispute; or
- The Respondent has been commonly known by the Domain Name, even when no trademark or service mark right has been acquired; or
- The Respondent has made 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.
As indicated in the Factual Background, the Respondent is using the Domain Name for advertising purposes, merely displaying automated commercial links connected with the Spanish words “venir” and “porvenir” as well as the phrase “por venir”. The Respondent has not used the Domain Name in any other manner and has not developed any specific content for the corresponding website.
Taking into account the above-described use of the Domain Name, the majority of the Panel considers it unlikely that any of the examples set forth in paragraph 4(c) of the Policy could apply to the present case since:
- The Respondent is not using the Domain Name in any way that is strictly related to its generic meaning. It is using the Domain Name for a PPC parking page where many of the posted links are referred to websites that have no relationship at all with the Spanish generic word “porvenir”. Indeed, the website connected with the Domain Name includes categories of links to products or services related to gardening, software, media, hardware, health & beauty, films, candle making or hobbies in general. It is clear that said categories are unrelated to the words “future”, “fate”, “fortune”, to phrases like “still to come”, “that which will come” or to any other possible sense given to the Spanish word “porvenir”.
- The Respondent is not known at all by the name “Porvenir”. On the contrary, it has expressly acknowledged that it is engaged in a pattern of conduct based on the registration and use of generic dictionary words or phrases. Such conduct by by itself “does not [necessarily] give rise to any rights or legitimate interests in the name on the part of a respondent who uses it in ways like this that are not tied to the generic meaning of that word”, as indicated in Compart AG v. C / Vertical Axis, Inc.,WIPO Case No. D2009-0462.
- As previously shown and expressly recognized by the Respondent, the Domain Name is being used for commercial purposes (i.e. as an advertising platform). This fact in this case automatically excludes the possibility that the Respondent has made a legitimate noncommercial or fair use of the Domain Name
Beyond these arguments, one member of the Panel considers that the actual use to date of the Domain Name by the Respondent has constituted a disruption of the Complainant's business, as -according to this Panel member's view- such a use is aimed at diverting Internet users originally looking for the Complainant's website to the Respondent's advertising platform. Nonetheless, this approach is not shared by the rest of the members of the Panel. On the contrary the other members of the Panel deem that as explained in more detail in section C below- the Respondent has neither been aware of the existence of the Complainant nor of its PORVENIR trademarks until the Complainant itself contacted the Respondent in connection with the Domain Name.
Taking into account all the above, the majority of the Panel considers that the Complainant has fulfilled the second one of the conditions required by the Policy.
One member of the Panel is not persuaded that a use of a domain name for what is (and has clearly been) a genuine commercial purpose (i.e. for advertising revenue, albeit by way of PPC revenue) cannot give rise to a legitimate interest in respect of that domain name in circumstances where the acquisition of the domain name in question was genuinely without knowledge of the complainant or its trade mark. However, in light of the Panel's finding under the next head, this member of the Panel finds it unnecessary to explore the matter in any greater depth. C. Registered and Used in Bad Faith
The third of the elements set forth in paragraph 4(a)(iii) of the Policy is that the Complainant proves that the Respondent has registered and is using the Domain Name in bad faith. These conditions are cumulative, as recurrently stated in the decisions adopted under the Policy (e.g. World Wrestling Federation Entertainment, Inc. v. Michael Bosman,WIPO Case No. D1999-0001; or Robert Ellenbogen v. Mike Pearson,WIPO Case No. D2000-0001).
With regard to the potential registration in bad faith of the Domain Name, the Complainant must be able to prove that the Respondent was aware of the existence of the Complainant as well as of its PORVENIR trademarks at time of registration of the Domain Name and that said registration was guided by an intention to unfairly benefit from said trademarks and/or damage the business of the Complainant.
For that reason, the key issue for solving this point is to decide if there exist sufficient grounds and evidence to consider that, when registering or acquiring the Domain Name, the Respondent was indeed aware of the existence of the Complainant and intended to profit unduly from the reputation of the Complainant's trademarks. Since the Complainant has not been able to provide the Panel with actual evidence of such awareness by the Respondent, the Panel must determine if there exist sufficient elements to presume that the Respondent was indeed aware of the existence of the Complainant and its trademarks at the moment of registration of the Domain Name.
The view of the Panel is that the analysis of this question should be made from a global standpoint, taking into account that the Domain Name is a generic top level domain (gTLD) instead of a country-code top level domain (ccTLD); and that the dispute involves two parties from different jurisdictions. In addition, it is important to bear in mind that the Domain Name is based on a generic Spanish dictionary word. Given the present circumstances, and in the absence of evidence of the Respondent's having knowledge of Complainant's registered mark, in order to presume that the Respondent registered the Domain Name due to the existence of the Complainant's trademarks, it would normally be necessary to establish that the “porvenir” word had a secondary meaning in such a way that it was directly connected with the Complainant. Said secondary meaning should, in this Panel's view, normally derive from the fame of those trademarks in the territory where the Respondent was seated (or was otherwise demonstrably familiar, because for e.g. Respondent was doing business there) at the time of registration of the Domain Name, so that, as a consequence of their notoriety in that territory, it would be unreasonable to believe that the Respondent was not aware of the Complainant's trademarks at that time.
In this case it does not seem that the above-mentioned circumstances are present if the following elements are taken into account:
- Firstly, the Complainant has only been able to prove that its trademarks are known in Colombia (the Complainant's jurisdiction) and in other Latin American countries such as, for example, Ecuador. The Complainant has not provided any evidence of recognition of its PORVENIR trademarks in the US, where the Respondent is based. As a matter of fact, the Complainant has not made any mention of its operations and use of its trademarks (if any) in the US market. Hence, even though the Panel does not deny the recognition of the Complainant's trademarks, it considers that such recognition must be considered regional (covering Colombia and other Latin American countries) but certainly not the territory of the US;
- Secondly, the recognition of the Complainant's trademarks must be understood as related to the services it provides (pension funds management), but not to all services and products globally considered. In this sense, the Respondent does not use the Domain Name for the provision of similar services to those of the Complainant, but to clearly different ones; and
- As acknowledged by both parties, the Respondent is specialized in the registration of large amounts of domain names based on dictionary words and generic phrases rather than in third parties' trademarks. It seems unlikely that the Respondent would have made an exception with the Domain Name and by registering it had tried to take advantage of the Complainant's trade marks.
Taking into account these factors, the majority of the Panel considers that the most likely explanation for the registration of the Domain Name by the Respondent is that such a registration took place due to its connection with a generic word rather than with the trademarks of a company operating in different jurisdictions and without a presence in the US. Pursuant to this approach, it seems highly unlikely that the Respondent was aware of the existence of the Complainant or of its trademarks (given the seeming geographical limitations of the recognition of those trademarks), and the absence of evidence of Respondent presence in the Complainant's country of business. This interpretation is aligned with previous decisions adopted under the Policy (see, for example, Your Golf Travel Limited v. Hardelot Holidays Limited, WIPO Case No. D2007-1058; or Weather Shield Mfg., Inc. v. Lori Phan,WIPO Case No. D2007-1247).
This is the vision of the majority of the Panel. Nevertheless, one of its members is persuaded that the Respondent was aware of the existence of the Complainant in the Colombian market and, thus, registered the Domain Name with the purpose of impeding Complainant to register it. Nevertheless, that member of the Panel does also acknowledge that the Complainant has failed to provide substantial evidence of the Respondent's alleged bad faith surrounding the registration of the Domain Name. In this sense, the assertions made by the Complainant, in the absence of solid support, cannot serve as valid grounds for considering that the Respondent registered the Domain Name in bad faith. It is precisely this lack of evidence and not the innocence or legitimacy of the Respondent that leads said panelist to consider that the Complainant must not prevail on this question.
Hence, the final conclusion of the Panel on this issue is that the Complainant has failed to prove that the Domain Name was registered in bad faith.
Taking into account the above, the Panel does not consider necessary analyzing in depth whether the Respondent has used the Domain Name in bad faith. However, the Panel deems appropriate clarifying that it is of the opinion that the Respondent did not behave in bad faith when it replied to the monetory offer filed by the Complainant. Indeed, there is no evidence that the Respondent tried to sell the Domain Name to the Complainant or to one of its competitors. On the contrary, it was actually the Complainant that approached the Respondent in order to try to purchase the Domain Name, without any previous invitation from the Respondent. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Albert Agustinoy Guilayn
Presiding Panelist
Fernando Triana
Panelist
Tony Willoughby
Panelist
Dated: November 23, 2009
Full & Egal Universal Law Academy