The Complainant is Central Media S.C. of Ciudad de México, Mexico, represented by Rios Abogados S.C., Mexico.
The Respondent is Valentin Lotrean of Victoria, Australia, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with NetRegistryPty Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2016. On December 22, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 4, 2017, 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. The Complainant filed an amended Complaint on January 9, 2017.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint and the amended Complaint, and the proceedings commenced on January 10, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 30, 2017. An automatic extension of the Response due date was granted until February 4, 2017 under paragraph 5(b) of the Rules. The Response was filed with the Center on January 30, 2017. The annexes to the Response were filed on January 31, 2017.
The Center appointed Adam Taylor as the sole panelist in this matter on February 6, 2017. 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 parties made unsolicited supplemental filings on February 16, 2017. 4. Factual Background
The Complainant was incorporated in Mexico on November 7, 2001. It supplies advertising-related design, production and other services under the name “Central Media”.
The Complainant owns a number of trade marks for “Central Media” including Mexican trade mark no. 795319, filed on February 28, 2003 and registered on June 12, 2003 (figurative); and Mexican trade mark no. 1209930, filed on December 1, 2010 and registered on March 31, 2011 (words only), both in class 35. Both trade marks specify a first use date of November 12, 2001.
The Complainant registered the domain name on April 10, 2003. The Complainant uses this domain name for its main website.
The Respondent registered the disputed domain name on November 16, 1999.
The disputed domain name has not resolved to an active website since at least 2005. However, as of May 11, 2000, there was a website at the disputed domain name, the home page of which was headed “The Central Media Website” and which stated: “Welcome to the Cental Media Website. We are here to offer you a range of Computer Products and Services to help in business or just at home […]”
The Respondent possessed an Australian business name registration for “Central Media” from June 29, 2005, to June 29, 2008. 5. Parties’ Contentions A. Complainant
A summary of the Complainant’s contentions is as follows:
In addition to its trade marks, the Complainant possesses a reservation of rights by the Mexican “Public Registry of Copyrights of the National Institute of Copyrights” (referred to below as the “Mexican Copyright Registry”) for “the title CENTRAL MEDIA, applied to periodic distribution via computer network”, which applies from August 21, 2015, to August 21, 2017.
The disputed domain name is identical to the Complainant’s trade mark.
The Respondent lacks rights and legitimate interests in the disputed domain name.
Trade marks searches in Mexico, the United States of America and Australia do not reveal any trade mark registrations or applications by the Respondent for the terms “Central Media”.
The Respondent has had no authorization from the Australian government to use the business name “Central Media” since 2008.
There is no evidence that the Respondent is using or preparing to use the disputed domain name in connection with a bona fide offering of goods of services.
Even if did so formerly, the Respondent has had no such rights or legal standing to own or use the disputed domain name since 2005. Simple registration of the disputed domain name is insufficient to establish rights or legitimate interests.
The fact that the Respondent registered the disputed domain name before the Complainant registered its intellectual property rights does not of itself assist the Respondent in establishing rights or legitimate interests.
The Respondent is not usually known by the disputed domain name and it does not use the disputed domain name non-commercially.
The lack of any website at the disputed domain name constitutes “passive holding” in accordance with cases such as Telstra Corporation Limited, v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
The Respondent’s registration of the disputed domain name prevents the Complainant, owner of the “Central Media” trade marks, from registering it.
The fact that the Complainant’s corporate name has been “Central Media SC” since 2001 and its exclusive use of the title “central media” in accordance with its rights granted by the Mexican Copyright Registry highlight the need to transfer the disputed domain name to the Complainant.
If the Respondent uses the disputed domain name for an active website, this would constitute an attempt to attract Internet users by creating confusion with the Complainant’s rights. B. Respondent
A summary of the Respondent’s contentions is as follows:
The Respondent acknowledges that Complainant has rights in a trade mark which is identical or confusingly similar to the disputed domain name.
The Respondent does not require a business registration, business name, trade mark or other official authorization in order to register a domain name under the generic Top-Level Domain (“gTLD”). “com”.
Lack of a website is not equivalent to non-use of a domain name. Since 2013, the MX records of the disputed domain name were configured for use with G-Suite, formerly known as Google Apps.
Unpublished draft logos and website designs as well as communications with a designer and technology service provider over the period from 2014 to 2016 constitute demonstrable preparations to use the disputed domain name in connection with a bona file offering of goods or services.
Under the Policy, it is sufficient that the Complainant “has been” commonly known by the disputed domain name, which is satisfied by the Respondent’s former registration of “Central Media” as a business name in Australia. The Respondent’s account with its technology service provider remains in the name “Central Media”.
The Respondent has a non-commercial, as well as commercial, interest in the disputed domain name in that it was registered by the Respondent at a young age with the help his father and therefore has significant sentimental value.
The disputed domain name was not registered in bad faith. It was registered almost two years before first use of the Complainant’s trade mark.
The Internet Archive Wayback Machine contains evidence of use between 1999 and 2001.
The Respondent has been used for university projects in 2004.
The Complainant’s incorporation and trade marks give it no additional rights or register a “.com” gTLD beyond that of any other legitimate registrant.
The Complainant must show that the disputed domain name is being used in bad faith, not that this might happen in future. In any case, confusion with the Complainant’s rights does not of itself demonstrate bad faith. Multiple organisations in different regions may operate under identical or similar domain names. Even if the Respondent were to promote similar services to the Complainant, that would not necessarily lead to confusion because, amongst other things, the Complainant does not operate in Australia and its primary language is Spanish.
The Complainant has made a number of attempts to buy the disputed domain name from the Respondent. Given the timing of the Complainant’s recent failed bid to purchase the disputed domain name and the filing of this proceeding, the latter amounts to reverse domain name hijacking (“RDNH”). C. Complainant’s Supplemental Filing
The Panel has allowed the Complainant’s supplemental filing insofar as relevant to RDNH (see below). In this regard, the Complainant denies that the domain purchase enquiry evidenced by the Respondent was made by it or on its behalf. 6. Discussion and Findings A. Supplemental Filings
The Complainant made an unsolicited supplemental filing on February 16, 2017. The Respondent responded the same day with its own brief supplemental filing objecting to the Complainant’s filing and asking for an opportunity to respond if the Complainant’s filing were to be admitted.
Paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of supplemental filings. Paragraph 10(d) states: “The Panel shall determine the admissibility, relevance, materiality and weight of the evidence”. Paragraph 12 states: “In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties”.
The principles which the Panel should apply in deciding whether or not to admit supplemental filings have been considered in many cases under the Policy. See, e.g., The E.W. Scripps Company v. Sinologic Industries,WIPO Case No. D2003-0447. The principles include: that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimize prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself.
The Panel has decided not to admit the Complainant’s filing, subject to the exception mentioned below. First, the filing was made only two business days before the decision due date and some two weeks after the filing of the Response, to which the supplemental filing is a reply. The Complainant should it have submitted it far sooner. Second, the Complainant’s supplemental filing is almost entirely devoted to the genuineness and extent of the Respondent’s use of the disputed domain name, matters which are irrelevant in the circumstances of this case, as explained below. Even had it been admitted in full, the Complainant’s supplemental filing would have made no difference to the outcome of this case.
The Panel has allowed the Complainant’s supplemental filing to the limited extent that it addresses the Respondent’s allegation of RDNH. In view of the Panel’s finding in relation to RDNH, the Panel has not considered it necessary to give the Respondent an opportunity to reply thereto. B. Identical or Confusingly Similar
It is not in dispute that the Complainant has rights in the mark CENTRAL MEDIA by virtue of its registered trade marks for that term and that the disputed domain name is identical or confusingly similar to the Complainant’s trade mark, disregarding the disputed domain name suffix “.com”.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy. C. Rights or Legitimate Interests
It is unnecessary to consider this element in light of the Panel’s conclusion below under the third element. D. Registered and Used in Bad Faith
The Complainant must establish registration and use of the disputed domain name in bad faith.
Paragraph 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states the following consensus view:
“Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date […], when a domain name is registered by the respondent before the complainant’s relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant’s then non-existent right.”
Here, registration of the disputed domain name, on November 16, 1999, could not have been in bad faith as it pre-dated the Complainant’s establishment of rights.
The Complainant’s earliest registered trade mark for CENTRAL MEDIA was filed on February 28, 2003.
According to the Complainant’s registered trade marks, the Complainant’s first use of this term was on November 12, 2001; indeed the Complainant was incorporated only five days earlier on November 7, 2001. And the Complainant does not suggest that it acquired any earlier unregistered rights from another entity.
The Complainant’s case on bad faith hinges on alleged “passive holding” but the Complainant completely misstates the concept. It does not mean, as the Complainant claims, that mere non-use of a domain name for a website is of itself somehow incriminating. Rather, the principle is that the lack of active use of a domain name does not as such prevent a finding of bad faith. In such circumstances, panels may draw inferences from circumstances which may nonetheless be indicative of bad faith such a complainant having a well-known trade mark, no response to a complaint having been filed and/or the registrant’s concealment of its identity. See the consensus view expressed in paragraph 3.1 of WIPO Overview 2.0.
The concept of “passive holding” is not a free-standing type of bad faith; nor does it dispense with the requirement for registration in bad faith. As there is no registration in bad faith in this case, the issue of passive holding does not arise.
Even if registration of the disputed domain name had post-dated the Complainant’s establishment of trade mark rights, there would be no basis for a finding of passive holding in this case: First, the evidence provided by the Complainant itself shows that the disputed domain name was formerly used by the Respondent for an active website. Second, there are no circumstances which would warrant drawing inferences of bad faith. For example, the Complainant has provided no evidence indicating that its trade mark is well-known and indeed the evidence indicates that the Respondent has in the past used the disputed domain name for various genuine ventures, apparently unrelated to the Complainant’s field of activity, and that he formerly possessed an Australian business name registration for “Central Media”.
The Complainant’s highly arguable claim that any future active use of the disputed domain name by the Respondent would constitute an attempt to create confusion with the Complainant’s rights is fatally undermined by the lack of registration in bad faith, even leaving aside the dubious relevance of such speculative future use of the disputed domain name to paragraph 4(a)(iii) of the Policy which refers to a domain name which “has been registered and is being used in bad faith”.
Nor is the Complainant assisted by its alleged ownership and/or alleged exclusive use of rights granted by the Mexican Copyright Registry for “the title CENTRAL MEDIA, applied to periodic distribution via computer network”. The Complainant has not clearly explained the nature and extent of this alleged right.
In any case, it would be well outside the Panel’s remit to assess any such right. If the Complainant does possess such a right, and if it applies to the disputed domain name, no doubt there are other channels via which the Respondent can enforce it. So far as the UDRP is concerned, the Panel does not see why this vague and unsupported assertion by the Complainant should remotely be treated as “highlighting” the need for transfer of the disputed domain name to the Complainant when the Complainant has manifestly failed to establish the third element under of the Policy. E. Reverse Domain Name Hijacking (“RDNH”)
The Respondent argues that the Complainant has been guilty of RDNH.
Paragraph 15(e) of the Rules provides that, 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”. RDNH is defined under the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
The Respondent bases its argument on the alleged coincidence in timing between an alleged failed attempt by the Complainant to buy the disputed domain name from the Respondent and the filing of this proceeding. However, there is no evidence linking the offer with the Complainant, which denies involvement. The Panel therefore disregards it.
Nevertheless, the Panel considers that the Complainant has been guilty of RDNH because its case has failed by a large margin. In the Panel’s opinion, the Complainant knew or at least should have known that it could not prove one of the essential UDRP elements. The Complainant’s representatives quoted extensively from UDRP case law and the Panel thinks it unlikely that they were unaware of the current overwhelming view of UDRP panelists as to the need to prove registration as well as use in bad faith. 7. Decision
For the foregoing reasons, the Complaint is denied and the Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Adam Taylor
Sole Panelist
Date: February 20, 2017
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