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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Proteccion S.A. v. Telepathy, Inc.

Case No. D2006-0868

 

1. The Parties

The Complainant is Proteccion S.A., Medellнn, Colombia, represented by Gуmez-Pinzуn Asemarcas S.A., Colombia.

The Respondent is Telepathy, Inc., Development Services, Washington, DC, of United States of America, represented by John Berryhill, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <proteccion.com> is registered with Moniker Online Services, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2006. On July 7, 2006, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On July 10, 2006, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced July 14, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was August 3, 2006. The Respondent requested an extension to submit a Response. In view of the Complainant’s consent, the Center extended the Response due date until August 14, 2006. The Response was received by the Center on August 15, 2006.

The Center appointed Daniel J. Gervais, Nelson A. Diaz and Richard W. Page as panelists in this matter on September 6, 2006. 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.

 

4. Factual Background

The Complainant is a severance and pension fund company based in Colombia. It owns trademark registration for the word PROTECCION (which is the Spanish word for “protection”) but combined with figurative elements of other words. The marks are registered in Colombia since 1992. One of the Complainant’s pension funds is the second largest in Colombia, with assets of more than US$9 billion. The Complainant operates a web site located at “www.proteccion.com.co”.

The Respondent registers and offers for sale domain names composed of common words. The Respondent registered the disputed domain name as well as several other domain names composed of common Spanish words approximately eight years ago.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that the domain name is identical to the Complainant’s PROTECCION trademark, with the simple addition of the top-level “.com.”

The Respondent has no rights or legitimate interests in the domain name. The domain name was registered eight years ago and is not used except to provide a variety of links, including to the Complainant’s funds. The Respondent is not making a bona fide use of the domain name and is not known by the domain name.

The domain name is being used in bad faith. The Respondent has tried to sell the domain name for 10.000 Euros, which far exceeds the out-of-pocket expenses. The Policy deems it bad faith registration and use when a speculative use of a domain name is not accompanied by good faith use, when the registrant has actual or constructive knowledge of the complainant’s trademark, when there is a pattern of speculation and when the holder of a protected mark is prevented from registering the domain name. Those elements are all present in this case.

There are several references to Colombian pension funds on the website to which the domain name resolves, which demonstrates knowledge by the Respondent of the Complainant’s mark and activities. The Respondent’s site also offers tools to check the status of investment funds managed by the Complainant. Access to investment information concerning specific individual accounts is offered on the side, which may be in breach of confidentiality rules. This use of the domain name may cause damage to the Complainant’s business or reputation, which amounts to bad faith use under the Policy.

The registration and use is also in bad faith because it attempts to attract Internet users to the Respondent’s site for commercial gain by giving the impression of a linkage with the Complainant.

B. Respondent

The Respondent contends that the Complainant does not have rights in the PROTECCION mark. The generic word “protecciуn” is not registered as such, nor can the Complainant have common law rights following from use, because Colombian (civil) law does not recognize common law marks.

The domain name is not similar to the Complainant’s mark once the other words and/or figurative elements are factored in, especially because the domain name is composed of a common word.

The practice of speculating by registering and offering for sale domain names composed of common words is not illegitimate. The Respondent registered the disputed domain name as well as several others on the same date several years ago and had no knowledge of the Complainant or of its PROTECCION mark. There is evidence that the Complainant does business in the United States.

Having no knowledge of the Complainant or of its mark(s), the Respondent did not register the domain name in bad faith, nor was it used in bad faith.

The domain name resolved to various servers over the years since it was first registered. At one point, it was hosted on a system which generated automatically lists of words based on recent searches. A log (made available to the Panel online), shows that a very significant number of accesses to that host were made from the Complainant’s computer network, and it is possible that search words such as “Colombia” or “pension fund” that at one point appeared on that website and which the Complainant attributes to the Respondent were in fact input by the Complainant. The Respondent contends in any case that it did not input those words, and such words were only there for a brief period of time.

The Respondent does not know with certainty how those words appeared on the site, but it states that it is not responsible for putting those words on the web page.

 

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements is satisfied:

1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section 6.A.);

2. The Respondent has no rights or legitimate interests in respect of the domain name (see below, section 6.B); and

3. The domain name has been registered and is being used in bad faith (see below, section 6.C.).

Paragraph 4(a) of the Policy clearly states that the burden of proving that all these elements are present lies with the Complainant.

Pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom, as it considers appropriate.

A. Identical or Confusingly Similar

This question raises two issues: (1) does the Complainant have rights in a trademark; and (2) is the domain name identical or confusingly similar to such trademark or service mark.

On the first question, the Complainant has established rights in a number of trademarks registered in Colombia containing the word PROTECCION combined with other words or phrases, figurative elements, or both.

On the second question, the domain name is composed of the word “proteccion” and the gTLD “.com.” The dominant feature of the Complainant’s marks for an average consumer is clearly the word PROTECCION, which is usually written in larger typeface.

The Respondent argues that the domain name consists of a common Spanish word and as such should not be protected. However, marks consisting of common words may acquire secondary meaning. Words such as APPLE and ORANGE or phrases such as EL CORTE INGLES (“the English tailor”), to name but a few, are good examples. It is true that the Complainant’s marks are not as famous as these examples. However, the Policy does not require fame to apply. The famous or well-known nature of a mark may increase the scope of its protection under trademark law, but the fact remains that the domain name in this case consists of the dominant element of the Complainant’s marks.

A finding of similarity is thus warranted.

The Panel thus finds for the Complainant on the first part of the test.

B. Rights or Legitimate Interests

The Complainant submits that the Respondent has no rights or legitimate interests in the domain name based on the Complainant’s prior use of the PROTECCION mark. The Respondent disputes this contention.

According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent contends that the practice of registering domain names and then offering them for sale is not illegal. The Panel does not disagree. However, under paragraph 4(c) it does not in the Panel’s view amount to a legitimate interest. There were no elements introduced in evidence to show that the Respondent is or was commonly known by the domain name or that he made 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. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the domain name. The domain name resolved to various websites offering links of “general interest” for most of the eight-year period since it was initially registered. Such use in the Panel’s view amounts either to non-use (as discussed in the well-known decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and several other decisions since then) or use for commercial gain.

In the case of a reseller, as noted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (at paragraph 2.2), “[I]f the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under Paragraph 4(c) of the Policy, then the respondent may lack a legitimate interest in the domain name, even if it is a domain name comprised of a generic word(s).” See 402 Shoes, Inc. dba Trashy Lingerie v. Jack Weinstock and Whispers Lingerie, WIPO Case No. D2000-1223; Classmates Online, Inc. v. John Zuccarini, individually and dba RaveClub Berlin, WIPO Case No. D2002-0635; and Emmanuel Vincent Seal trading as Complete Sports Betting v. Ron Basset, WIPO Case No. D2002-1058.

Consequently, the Panel finds that the Complainant has successfully made a prima facie case, which the Respondent has failed to rebut. The Panel thus finds that Respondent has no rights or legitimate interests in the domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:

(i) circumstances indicating that Respondent has registered or 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 the Respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) Respondent has 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 Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product.

The Complainant argues that the offer to sell the domain name (for 10.000 Euros), the appearance on the website to which the domain name resolves of words suggesting a link to the Complainant and the speculative pattern displayed by the Respondent amount to bad faith registration and use.

The Respondent admits that he regularly registers and offers domain names for sale. From the documents submitted, it appears those domain names are composed of common words. The Respondent argues that it does not have the burden of checking whether any such word may infringe a trademark (assuming that the Respondent, as he asserts here, had no previous actual knowledge of the mark). In fact, one could reasonably conclude that the Respondent hopes to sell domain names, inter alia, to owners of marks that include or correspond to the words common or otherwise contained in the domain names it registers. Can a respondent in those cases, simply rely on a defense which consists of saying, essentially, the domain name consists of a common word and I have no duty to check? On the first part, the answer is clearly no, as demonstrated by the examples mentioned above. Common words can and are used as trademarks, and that is permitted provided the words are not generic (in relation to the goods and services in question) or clearly descriptive (ORANGE works as a mark for communication services and equipment, not for oranges).

The Policy applies to allow trademark owners to reflect their mark in domain names when the conditions of absence of legitimate interest and bad faith registration and use are present. The Policy specifically refers to registration for the purpose of sale to the trademark owner as a case of bad faith.

In addition, there is evidence that words such as “Colombia” and “pension” appeared at one point in time on the site to which the disputed domain name resolves, thus creating confusion with the Complainant’s business. There is a factual dispute as to the origins of those words, the Respondent suggesting (and trying to demonstrate by giving the Panel online access to a computer log), that the Complainant’s computer network was used, deliberately or not, to upload those terms to the Respondent’s site. The Panel is unable to make a factual determination as to the origin of the words in question, but the bare fact of their presence remains. The presence of those words on the site likely increased the traffic on the Respondent’s site and led to commercial gains.

The Panel acknowledges that, as decided in several cases, the fact that a domain name consisting of letters or common words clashes with a trademark of which the Respondent had no previous knowledge may be insufficient for a finding of bad faith. See Koninklijke KPN N.V. v. Telepathy, Inc., WIPO Case No. D2001-0217, (U.S. registrant could not “reasonably have been expected to know about the Complainant or its Benelux trademark.”); and Builder’s Best, Inc. v. Yoshiki Okada WIPO Case No. D2004-0748. The Panel’s findings do not impose a duty on the registrant to check every national trademark register. A finding of actual (or, in some circumstances, in the case of a US registrant and a US-registered mark, constructive) knowledge of the complainant’s mark is required. The Panel considers it reasonable to impose a basic duty of care in controlling the content of one’s website, especially in the absence of a disclaimer and/or a case where it is clear that postings can be made by anyone and are not the website operator’s responsibility (such as unmanaged listsservers). In this case, the Panel finds the words on the Respondent’s site did create a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product.

In view of the above, the Panel considers that in these particular circumstances a finding of bad faith registration and use of the domain name is warranted. The Panel thus finds for the Complainant on this third element of the test.

 

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 <proteccion.com> be transferred to the Complainant.

Daniel J. Gervais Presiding Panelist
Nelson A. Diaz Panelist	Richard W. Page Panelist

Dated: September 20, 2006