WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Grupo Televisa, S.A. et. al. v. Joel F. Gonzalez d/b/a Lux Entertainment and Ricardo Mendoza d/b/a Digital Work Studio
Case No. DTV2002-0001
1. The Parties
Complainant is a group of companies headed by Grupo Televisa, S.A., Avenida Vasco de Quiroga 2000, Edificio A, Piso 4, Colonia Zedec Santa Fe, Delegacion Alvaro Obregon, Mexico, D.F. 01210, and is comprised of numerous wholly-owned subsidiaries including Televisa, S.A. De C.V., Avenida Chapultepec 28, Piso 8, Colonia Doctores, Mexico, D.F. 06724, and Estrategia Televisa, S.A. De C.V., Avenida Vasco de Quiroga 2000, Edificio A, Piso 4, Colonia Zedec Santa Fe, Delegacion Alvaro Obregon, Mexico, D.F. 01210. Grupo Televisa, S.A., Televisa, S.A. De C.V., And Estrategia Televisa, S.A. De C.V. are all Mexican corporations. The Complainants are collectively referred to hereinafter as "Televisa".
Complainant�s authorized representatives in this administrative proceeding are: Norman P. Leventhal and Suzanne E. Head, Leventhal, Senter and Lerman P.L.L.C., 2000 K Street N.W., Suite 600, Washington, D.C. 20006, USA.
Respondents are Joel F. Gonzalez, d/b/a Lux Entertainment, 1777 Taft Street, Eagle Pass, Texas 78852 and Ricardo Mendoza, doing business as Digital Work Studio, 137 El Indio Highway, Eagle Pass, Texas 78852. Joel Gonzalez is the named Registrant of the domain name in dispute. However, Complainant has established as a result of correspondence from Joel F. Gonzalez (provided as Annex B), that "the person who owns the rights to use the domain here in question" is his "boss." Complainant advises that although Respondent Gonzalez never refers to his employer by name, Complainant has investigated and determined through information and belief that such person is Ricardo Mendoza, d/b/a/ Digital Work Studio, 137 El Indio Highway, Eagle Pass, Texas 78852. Both parties have been named as Respondents in the Complaint.
2. The Domain Name and Registrar
The domain name in dispute is .
The Registrar with which the disputed domain name is registered is The .tv Corporation International, 1100 Glendon Avenue, 8th Floor, Los Angeles, CA 90024, USA, Attn: General Counsel.
3. Procedural History
The Complaint was filed pursuant to 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").
The Complaint was received on January 31, 2002 by the Center by e-mail and in hard copy on February 12, 2002. The Center acknowledged receipt of the Complaint on February 4, 2002.
On February 6, 2002 a request for Registrar verification was forwarded to the Registrar. On February 12, 2002, the Registrar confirmed receipt of the Complaint by e-mail. The Registrar advised the Center that the current registrant of the domain name is Joel Gonzalez. The Administrative Contact, Technical Contact and Billing Contact are shown as Joel Gonzalez, Lux Entertainment, 1777 Taft, Eagle Pass, TX 78852, U.S.A. .
The current status of the domain name is "active".
On February 13, 2002, the Center forwarded Notification of the Complaint and Commencement of Administrative Proceedings, together with a copy of the Complaint to the Respondent Joel Gonzalez at Lux Entertainment, by e-mail and post/courier. The Notification and Complaint (without attachments) were copied to the Complainant and the Registrar by e-mail. The Center advised the Respondent that the formal date of the commencement of the administrative proceeding was February 13, 2002 and that the last day for sending a Response to the Complainant and to the Center was March 5, 2002.
On February 13, 2002, the Respondent Joel Gonzalez forwarded an e-mail to the Center advising that he did not post a domain name for auction on . Mr. Gonzalez advised that he was not responsible if a domain entrepreneur used his name to post a domain name for auction. Mr. Gonzalez further advised that he and Ricardo Mendoza were "thinking very seriously to start legal actions against WIPO or who ever is responsible for printing "screen shots" of a copyrighted site, ...".
On March 8, 2002 the Center notified the Respondent that the Respondent had failed to comply with the deadline indicated in the Notification of Complaint and Commencement of Administration Proceeding and was in default. The Center attached a formal Notification of Respondent Default.
The Complainant elected to have the dispute decided by a single-member Panel. The Center appointed Ross Carson as the single member Panelist. Mr. Carson duly submitted a Statement of Acceptance and Declaration of Impartiality. On April 2, 2002, the Center forwarded Notification of Appointment of Administrative Panel to the Parties.
Also, on April 2, 2002, the Center e-mailed the Transmission of Case File and Complaint to the Panelist and forwarded a hard copy by courier. The date scheduled for the Panel�s decision is April 16, 2002. The language of the proceedings is English.
4. Factual Background
The Trademark
Complainant has registered service marks for El Canal De Las Estrellas in forty-four countries worldwide, primarily in International Classes 35, 38, and 41. A chart of these registrations is provided as Annex H. The marks are used in connection with television broadcasting services for the television station known in Mexico City as both El Canal De Las Estrellas and Xew-Tv, Channel 2 but which is known only as El Canal De Las Estrellas when it is broadcast worldwide.
Complainant owns the federally registered United States service mark for El Canal De Las Estrellas (Registration Number 1658726 on the Principal Register), covering "television broadcasting services" in International Class 38 (filed by Complainant�s predecessor-in-interest and former subsidiary, Univisa, Inc.). The first use in commerce of the mark occurred on November 24, 1990. The mark became incontestable on September 26, 1997, when the U.S. Patent and Trademark Office accepted the Sections 8 and 15 filing of Complainant�s predecessor-in-interest and former subsidiary, Televisa International, LLC. 15 U.S.C. �1065. Copies of particulars of the U.S. Registration are provided as Annex I.
Since the mark�s registration, Complainant has been continuously and substantially using the service mark El Canal De Las Estrellas in commerce.
History
- Complainant is an international media and entertainment company incorporated in Mexico since 1972. Complainant is the largest media company in the Spanish-speaking world and a dominant figure in the international entertainment business, with a significant presence in the United States. Complainant has been continuously and substantially using the service mark El Canal De Las Estrellas in commerce.
- Complainant discovered in October 2001 that Respondent Gonzalez had registered the domain name and was offering it for sale for US$5,000 on the A Web site. A screenshot of this offer is attached as Annex F. On November 12, 2001, Complainant sent via email and Federal Express a letter to the registrants of the domain name, Joel F. Gonzalez and Lux Entertainment, advising them that the unauthorized use of the El Canal De Las Estrellas service mark in relation to the domain name was an infringement of Complainant�s registered service marks and requesting that Respondents transfer the domain name to the Complainant.
- On the same day, Respondent Gonzalez replied to Complainant�s letter via email, claiming that Respondents were "not incurring in any copyright infringement" . The domain name had been transferred to Respondents in exchange for "a time consuming and costly Web page design project" for a third party that went bankrupt and left Respondents� firm with "a considerable amount of unpaid services and fees." After reiterating that the domain name "has cost our firm all ready a lot of problems time and money," Respondent Gonzalez offered to "gladly transfer the rights to this domain" in exchange for remuneration for "all our time and effort involved on this domain and cover as well all unpaid services and fees, left by the former owner of this domain."
- On November 26, 2001, Complainant replied to Respondent Gonzalez�s email, responding to the points made therein and explaining further how Respondents� registration of the domain name infringed on Complainant�s El Canal De Las Estrellas service marks. Complainant refused to reimburse Respondents for the financial losses incurred as a result of Respondents� dealings with the previous registrant of the domain name, but offered to pay the official fees to have the domain name transferred, as well as the costs that were involved in initially registering the domain name.
- On November 28, 2001, Respondents replied with a second email. Although this email was sent by Respondent Gonzalez, it contained a letter within the letter. The author of the letter within the letter being referred to as Gonzalez�s "boss"). Despite the fact that was currently being offered for sale for $5,000 on the A Web site, Respondent Mendoza stated that "there is no price tag on it." Further, Respondent Mendoza admitted that Respondents have no rights in the mark El Canal De Las Estrellas: "We do not own the trade mark or anything that resembles it, in fact the domain name does not contain any company name or words that can be useful to us or claimed as property."
- Respondent Gonzalez declared that the domain name is "not for sale to your client or anyone" and stated that "[a]ll the answers to any further question you might have concerning this issue can be found on this and past-mails that you have received from us" (referring to Complainant�s offer to purchase the domain name for reimbursement of Respondents� "time and effort involved on this domain" and "all unpaid services and fees" left by the former owner of the domain name).
- Respondents concluded their email by indicating that the more Complainant attempted to assert its rights in its service marks, the more the ultimate cost to transfer the domain name would increase: "Also be aware that receiving another threatening or demanding letter from you will force us to forward this matter to our Law firm, �Ruiz and Associates� and all legal fees incurred in this issue will be added to the already outstanding pile of unpaid fees attached to this domain name." In concluding his portion of the email, Respondent Mendoza implied that Complainant should be willing to negotiate with Respondents when he stated that they "are more aware than you might think we are about Domain Name Dispute Resolution Policies, we all perfectly know where you will end up with this attitude� (NO WHERE)."
- Copies of all correspondence between Complainant and Respondents are included as Annex G.
5. Parties� Contentions
A. Complainant
(i) The Complainant submits that the domain name is identical or confusingly similar to the Complainant�s mark.
(ii) The Complainant submits that the Respondent has no rights or legitimate interests in the domain name .
(iii) Respondent is not using the domain name in connection with a bona fide offering of goods or services nor is Respondent making a legitimate non-commercial or other fair use of the domain name.
(i) Identical or Confusingly Similar
The Complainant submits that the domain name is identical or confusingly similar to the Complainant�s registered service marks for El Canal De Las Estrellas which are registered in forty-four countries worldwide. The marks are used in connection with television broadcasting services for the television station known in Mexico City as both El Canal De Las Estrellas and Xew-Tv, Channel 2. The channel is known as El Canal De Las Estrellas when it is broadcasted worldwide.
Complainant owns U.S. Service Mark Registration No. 1658726 for El Canal De Las Estrellas which has been used by Complainant and its predecessor-in interest and former subsidiary, Univisa Inc. since November 24, 1990. The mark has been assigned from Televisa International, LLC to Estrategia Televisa, S.A. de C.V. .
Complainant has used the mark El Canal De Las Estrellas in commerce continuously and substantially since its registration. Complainant submits that Complainant�s Mark has come to be identified in the mind of the public with Complainant and Complainant has generated significant goodwill in the mark.
Examples of use of the mark are provided as Annex J.
Complainant submits that Respondent�s registered domain name is identical to Complainant�s registered service marks for El Canal De Las Estrellas. The only deviation is that Respondent has added the geographically descriptive term ".tv" as a suffix. Consumers are likely to believe that the domain name is related to Complainant�s services.
(ii) Respondent has no Rights or Legitimate Interests in
Complainant advises that Respondents are not licensees of Complainant nor are they authorized to use Complainant�s mark.
Complainant submits that in order to establish rights or a legitimate interest in a domain name, some bona fide activity using the domain name must be undertaken or content placed upon a related web site to establish such rights or legitimate interests. (Barney�s Inc. v BNY Bulletin Board, WIPO Case No. D2000-0059). Respondents have not only admitted in their emails that they have undertaken no bona fide activity using the domain name or placed content upon a related web site to establish such rights or legitimate interest. The Respondents further announced on the web site itself that they intend never to take such action.
Complainant submits that Respondents are not using the domain names in connection with a bona fide offering of goods or services nor are Respondents making a legitimate non-commercial or other fair use of the domain names. Respondents state in their first email that the domain name "is not being used for anything at all" and that "the page has no content other than that the web hosting banner, an email address, and a text informing that the domain is for sale." After receiving Complainant�s first letter, Respondents changed the home page on the web site to state "This page does not have or will ever have any content" (Annex K).
Complainant submits that Respondents have not been commonly known by the domain name and have acquired no trademark or service mark rights. Respondents admit in their second email that they "do not own the trademark or anything that resembles it.... in fact the domain name does not contain any company name or words that can be useful to us or claimed as property".
Respondents identified the previous owner of the domain name as a "local TV station" and "the other party". Complainant submits that the identity of such entity is irrelevant to the discussion at hand. Paragraph 4(c) of the Policy instructs Respondents on "how to demonstrate your rights to and legitimate interests in the domain name". Therefore any use or preparations provided by Respondents on behalf of the previous owner of the domain name are irrelevant as to whether Respondents possess any legitimate interests in the domain name.
(iii) Respondent Registered and Used in Bad Faith
Complainant submits that Respondents have acted in bad faith by acquiring and using the domain name primarily for the purpose of selling, renting, or otherwise transferring to the Complainant or a competitor for a valuable consideration in excess of documented out-of-pocket costs directly related to the domain name.
Complainant submits that Respondents acquired the domain name from the prior registrant and registered it under the name of Joel F. Gonzalez with the intention of offering it for sale. In both of their emails to Complainant, Respondents indicate that the domain name was acquired as partial payment of a debt and that Respondents� only interest in the domain name is to recoup the financial losses they incurred during previous business dealings with the prior registrant. Respondents offered to sell the domain name to Complainant for a sum that would "pay for all our time and effort involved on this domain and cover as well all unpaid services and fees, left by the former owner of this domain".
Complainant further submits that there is no evidence of good faith by Respondents as they have failed to use the domain name to sell or provide any goods or services (Chanel, Inc. v. B, WIPO Case No. D2000-1126).
Respondents admit that their domain name is being passively held. Their emails state that "the page has no content.... and is not being use for anything at all". Complainant submits that passive holding of a domain name for a substantial period of time can be taken into account in concluding bad faith use of a domain name. (Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003; Guinness UDV America, Inc. v. Dallas Internet Services, WIPO Case No. D2001-1055.)
Complainant submits that Respondents have expressly stated on the web site and in correspondence that they have no intention of ever using the web site for any good faith purpose. The failure to make good faith use of a domain name indicates that Registrants� primary intent was to sell. (Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v Shane Brown d/b/a/ Big Daddy�s Antiques, WIPO Case No. D2000-0004).
Complainant further submits that as Respondents are located in Eagle Pass, Texas on the border with Mexico, Respondents must have had actual knowledge of Complainants service mark. El Canal De Las Estrellas is widely known and has a strong reputation in Mexico and the Spanish-speaking United States. Complainant submits that registration of a domain name containing a famous mark is strong evidence of bad faith. (Barney�s Inc. v BNY Bulletin Board, WIPO Case No. D2000-0059; Guinness UDV North America, Inc. v Dallas Internet Services, WIPO Case No. D2001-1055.)
Complainant further submits that bad faith is evidenced by the fact that Respondents have taken Complainant�s service mark El Canal De Las Estrellas in its entirety as part of their domain name. The fact that the domain name is confusingly similar to Complainant�s mark also demonstrates bad faith. Complainant submits that because the ultimate effect of any use of will be to cause confusion with El Canal De Las Estrellas, the use and registration of the domain name must be considered to be in bad faith. (Chanel, Inc. v IGGI Networks, Inc. WIPO Case No. D2000-1831; Forte (UK) Limited v. Eugenio Ceschel, WIPO Case No. D2000-0283.).
Complainant further submits that although is officially the country code for Tuvalu, it is primarily marketed for the purpose of reaching the television watching public. The relevant public in the United States will most likely read the suffix as the abbreviation of the word "television" and consider the domain name to refer to a television broadcasting station affiliated with the El Canal De Las Estrellas television channel.
Complainant further submits that Respondent�s registration of the domain name will prevent Complainant from using the domain name version of its service mark and will disrupt Complainant�s business by preventing it from contacting customers through the domain name comprised of its service mark El Canal De Las Estrellas and the suffix which is connected in the mind of the public with television. Complainant is being deprived of the right to decide which web site it may intend for its authorized affiliates. A trademark owner has the right to ensure that all third parties, such as affiliated stations, have access to the web site using its service mark in a domain name.
Complainant submits that as Respondents are using Complainant�s mark in its entirety, it is difficult to infer a legitimate use of the domain name by the Respondents.
Complainant submits that Respondents� attempt to conceal the identity of Respondent Mendoza in their communications with Complainant and with the Registrar .tv Corporation. Respondents assert in their correspondence that "my boss" "owns the rights to use the domain name". (Annex G e-mailed 11/28/01). The Respondents registered the domain name in the name of Joel F. Gonzalez. However, in the Respondent�s letter of February 13, 2002 to domain disputes at WIPO reference is made to both Respondents "thinking very seriously to start legal action...". Complainant submits that this behaviour does not support the idea that the domain name registration was made in good faith.
B. Respondent
The Respondents did not file a Reply or any evidence to demonstrate Respondents� rights to and legitimate interest in the domain name, examples of which are set out in Paragraph 4 (c) of the Policy.
6. Discussion and Findings
In order for the Complainant to prevail and have the disputed domain name transferred to itself, Complainant must prove the following (Paragraph 4(a) of the Policy):
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondents have no right or legitimate interest in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Identical or Confusingly Similar
The first element which the Complainant must prove is that the domain name is identical or confusingly similar to the Complainant�s service mark.
The Complainant�s mark is well known to television audiences in the United States, Mexico and other countries where the Complainants� programs are shown on television. The domain name is confusingly similar to the Complainant�s registered service mark. The domain name is identical to the Complainant�s trademark with the addition of the geographical term (country code) "tv". The first and inherently distinctive portion of the domain name is identical to Complainant�s mark. Respondent has associated the geographical term "tv" with the words El Canal De Las Estrellas to create a domain name which is confusingly similar with Complainant�s trademark.
Respondent Has No Rights or Legitimate Interest
The second element which the Complainant is required to prove is that the Respondent has no right or legitimate interests in respect of the domain name in dispute. The Complainant has established that the trademark El Canal De Las Estrellas was in wide use throughout America and Mexico/South America before the registration of the domain name in dispute. The Complainant�s uncontested evidence is that the Respondents have not been authorized by the Complainant to use any of the Complainant�s trademarks as part of a domain name or otherwise. The Respondent did not respond to the Complainant�s cease and desist letter and did not file a Response submitting proof of rights or a legitimate interest in respect of the domain name.
The solicitors for the Complainant forwarded a cease and desist letter to Joel F. Gonzalez , Lux Entertainment by e-mail on November 12, 2001. Mr. Joel Gonzalez responded by e-mail the same say stating :We are a web designing firm and we deal with issues like these on a daily basis,...". Further in the e-mail Mr. Gonzalez states "... the domain name in question here is not being use(d) for anything at all, we just own the rights to use it on the World Wide Web". Further in the e-mail Mr. Gonzalez states: "If you want to check the domain name for yourself and see that nothing is advertised there, the page has no content other than the web hosting banner, an e-mail address, and a text informing that the domain name is for sale." Mr. Gonzalez offers to sell the domain name to the Complainant stating "This domain name has cost our firm all ready a lot of problems, time and money. We will gladly transfer the rights to the domain name to your customer or any one that agrees to pay for all our time and effort involved on the domain and cover as well all unpaid services and fees, left by the former owner of the domain". (Annex G to the Complaint).
The solicitor for the Complainant responded by letter forwarded by e-mail on November 26, 2001 stating that the Complainant was not willing to reimburse the financial losses incurred by the Respondent as a result of the Respondent�s dealing with the previous registrant. The solicitor advised that the Complainant was willing to reimburse the Respondent for the costs that were initially involved in registering the domain name as well as the official fees associated with having the domain name in dispute transferred to the Complainant.
Mr. Gonzalez and "his boss" responded to the solicitor for the Complainant on November, 28 2001. In the e-mail Mr. Gonzalez included a letter from my boss (the person who owns the rights to use the domain name in question). The e-mail includes the statement, "... we do not own the trade-mark or anything that resembles". Following the letter from "my boss" Mr. Gonzalez stated: "... I must inform you that the rights to use in the World Wide Web "" are not for sale to your client or anyone".
Subsequently after service of the Complaint by e-mail on the Respondent on February 13, 2002 Joel Gonzalez e-mailed Domain Disputes at WIPO complaining about breach of copyright by the inclusion of "screen shots" in an Annex to the Complaint stating "And for your records, Ricardo Mendoza, as well as myself are thinking very seriously to start legal actions against WIPIO or whoever is responsible for printing "screen shots" of a copyrighted site. ...". The e-mail ended "Thank you the boss".
Attached as Annex "C" to the Complaint is a copy of a part of the material obtained from the website . At the site reference is made to Ricardo Mendoza and his years of experience in video production and in Web Design for KMOL-TV among others. In answer to a question Mr. Mendoza states "Thousands of people in our community (South Texas and North of Mexico) have access to the web right now, and many more are going online for the first time". The website also refers to Joel Gonzalez.
The inference I draw from the evidence is that the Respondents had no legal right or interest in a mark including "elcanaldelasestrellas". As stated in the e-mail of November 28, 2001 "we (Respondents) do not own the trade mark or anything that resembles". I infer from the evidence the Respondents carrying on business on the United States/Northern Mexico border were aware of the Complaint programming under the service mark El Canal De Las Estrellas and were not making a legitimate non-commercial or fair use of the domain name without intent for commercial gain. The Respondents did not and have no plans to use the domain name or a name corresponding to the domain name in dispute in connection with a bona fide offering of goods or services.
The Complainant has proven that the Respondents have no right or legitimate interest in respect to the domain name in dispute.
Registered and Used in Bad Faith
The third element which the Complainant is required to prove is that the disputed domain name has been registered and is being used in bad faith.
The Respondents offered the domain name to the Complainant for the cost of registration and losses and outstanding bills allegedly owed by an earlier registrant to the Respondents. The Respondents refused the Complainant�s offer to purchase the domain name in dispute for reimbursement of the costs associated with registration of the domain name and the costs associated with transfer of the domain name. The foregoing facts are evidence of bad faith use of the domain name. World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001.
The Complainant�s service mark El Canal De Las Estrellas is widely known and has a strong reputation in Mexico and the Spanish-speaking United States. The Respondent Ricardo Mendoza was involved in television programming. I find on a balance of probabilities that the Respondents had actual knowledge of the Complainant�s service mark at the time that the Respondents acquired the domain name in dispute. Registration of a domain name containing a famous mark is strong evidence of bad faith. Guinness UDV North America, Inc. v. Dallas Internet Services, WIPO Case No. D2001-1055.
The Complainant has proven that the domain name in dispute was registered and is being used in bad faith.
7. Summary of Findings
a) The domain name in dispute is confusingly similar to the Complainant�s trademark
b) The Respondent has no right or legitimate interest in respect of the disputed domain name.
c) The domain name has been registered and is being used in bad faith by the Respondent
8. Decision
In the Complaint, the Complainant requested that in accordance with Paragraph 4 .i of the Policy, the Panel issues a decision that the disputed domain name be transferred to Complainant. The Complainant having proved each of the three elements set out in Paragraph 4 (a)(i), (ii) and (iii) of the Policy is entitled to the remedy requested. The Panel requires that the domain name be transferred to Complainant Grupo Televisa, S.A. et al.
Ross Carson
Sole Panelist
Dated: April 15, 2002
Full & Egal Universal Law Academy