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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Telecom Personal, S.A., v. NAMEZERO.COM, Inc,

Case No. D2001-0015

 

1. The Parties

Complainant is Telecom Personal S.A., a corporation duly organized and existing under the laws of Argentina, with its principal place of business located at Reconquista 1088, ЁPiso 13, CP 1003, in Buenos Aires, Argentina.

Respondent is Namezero.com, Inc., a corporation duly organized and existing under the laws of the United States of America, whose address is 51 University Ave., Suite K, Los Gatos, California 95030, in the United States of America.

 

2. The Domain Name and Registrar

The domain names under dispute are "telecompersonal.com", "telecompersonal.net" and "telecompersonal-net.com" (the "Domain Names").

The registrar of the domain name under dispute is Network Solutions, Inc. ("NSI" or the Registrar), with business address in Herndon, Virginia, United States of America.

 

3. Procedural History

On January 4, 2001, and January 8, 2001, Complainant submitted its complaint through e-mail and hardcopy, respectively, with the required filing fee for a three-member Panel, to the World Intellectual Property Organization ("WIPO") Arbitration and Mediation Center (the "WIPO Center"), in accordance with the Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, the Rules for Uniform Domain Name Dispute Resolution Policy (the " Rules"), and WIPO’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("WIPO’s Supplemental Rules).

On January 9, 2001, WIPO sent via email to Complainant an "Acknowledgement of Receipt of Complaint".

On January 25, 2001, WIPO sent a "Request for Registrar Verification" via email to the Registrar requesting, confirmation that the Registrar had received a copy of the complaint; that the domain names under dispute are registered with it; that Respondent is the current registrant of such Domain Names; and full contacts details available under the WHOIS database; that the Uniform Domain Name Dispute Resolution Policy applies to the Domain Names; and, the current status of the Domain Names.

On January 26, 2001, WIPO received via e-mail from NSI "Network Solutions’ Verification Response" confirming that the Domain Names are currently registered with NSI; that Respondent is the registrant as well as its administrative, technical and billing contacts; that "telecompersonal.com", "telecompersonal.net" and "telecompersonal-net.com" Domain Names are in "active" status; and, that a certain Network Solutions 5.0 Service Agreement is in effect.

On January 29, 2001, WIPO sent the "Notification of Complaint and Commencement of Administrative Proceedings", together with a copy of the complaint via e-mail and facsimile and by courier to Respondent, and therefore to the administrative, technical and billing contacts. A copy has also been communicated to ICANN and to the Registrar, via e-mail. The Notification indicated that February 17, 2001, was the deadline to submit a Response to the Complainant according to the requirements described in paragraph 5(a) of the Rules.

WIPO completed a "Formal Requirements Compliance Checklist". This Panel agrees with WIPO’s assessment and considers that the complaint was properly notified to the registered domain-name holder, the technical contact, and the administrative contact as provided for in paragraph 2(a) of the Rules and that formal compliance within the requirements of the Policy, the Rules, and Supplemental Rules was met.

On February 17, 2001, Respondent submitted its response to the complaint through e-mail. In such response Respondent indicated that they have made inquiries of the members who registered these domain names and have determined that the members do not have any pre-existing or other legitimate rights in the disputed domain names, or that they have otherwise violated their Terms of Service, and therefore, Respondent confirmed its intention and disposition to transfer the domain names under dispute to Complainant. That upon completion of their investigation, they promptly removed the names from their DNS servers and offered to transfer ownership of the domain names to Complainant at no charge (subject to withdrawal of the Complaint, as domain names subject to an administrative proceeding cannot be transferred by the Verisign Registry).

On February 19, 2001, WIPO sent via email to Respondent and to Complainant an "Acknowledgement of Receipt of Response" confirming that the Response was received via e-mail on February 17, 2001.

That Respondent had agreed that the dispute be decided by a three member Administrative Panel and therefore a three-member was appointed as proposed by the Complainant, as may be evidenced from section VII of Complainant’s complaint.

This Panel considers that with receipt of the complaint by Respondent, it has been given a fair and reasonable opportunity to properly and diligently respond, to exercise its rights, to defend its case, submit all relevant information, documentation, as well as any allegations it may have considered appropriate.

On March 15, 2001, the appointment of the Administrative Panel was completed as the undersigned Panelists have each of them signed and sent to the WIPO Center, a Statement of Acceptance to participate as Member Panelists, together with their Declaration of Impartiality and Independence.

On March 15, 2001, WIPO sent to Complainant and Respondent a "Notification of Appointment of Administrative Panel and Projected Decision Date", appointing Messrs. Pedro W. Buchanan Smith, Roberto Bianchi and Dennis A. Foster as member Panelists and scheduling March 29, 2001, as the date for issuance of the Panel’s decision, notifying the above pursuant to paragraphs 6(f) and 15(b) of the Rules. On the same date, WIPO transferred the case file to the Administrative Panel, with copy of the file transmission letter being sent to Complainant and Respondent.

The Panel has not received any further requests from Complainant or Respondent regarding other submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information, statements or documents from the parties. As for the information and documentation received, no explanation or confirmation from either party’s allegations is required, nor is there a need as an exceptional matter, to hold any in-person hearings as necessary for deciding the complaint, as provided for in paragraphs 12 and 13 of the Rules. Therefore, the Panel has decided to proceed under the customary expedited nature contemplated for this type of domain name dispute proceeding.

The language of the proceeding is English, as being the language of the domain registration and Service Agreement, pursuant to paragraph 11(a) of the Rules, and also in consideration of the circumstances of this administrative proceeding and to the fact that there is no express agreement to the contrary by the parties. Furthermore, in order to procure for the parties a fair and reasonable opportunity to respond, to exercise their rights and to present their respective cases, and that both parties be treated with equality in these administrative proceedings, the Panelists will accept and consider all communications, information and documents submitted also in the Spanish language, under the authority granted in the terms of paragraph 11(a) of the Rules.

 

4. Factual Background

Complainant began its business activities in 1996 and is one of the largest mobile telephone companies in Argentina. It provides services throughout the Argentine territory serving 1,700,000 customers, which approximately accounts for 32% of the domestic market.

A Network Solutions’ WHOIS database search indicates that the record of registration of Respondent’s Domain Names "telecompersonal.com" and "telecompersonal.net" was created on July 18, 2000, this is clearly after Complainant’s registration of the trademark TELECOM PERSONAL which was obtained on October 21, 1998, and also after Complainant’s registration of the domain name "telecompersonal.com.ar" registered by the Complainant on January 13, 1997.

In support of its Complaint, Complainant submitted copies of the following Trademark Registrations:

a) Federal Trademark TELECOM PERSONAL and design, registered in Argentina in the National Institute of Industrial Property, under registration Number 1’696,273, issued on October 21, 1998, in International class 09 covering for all classes, with application date on January 5, 1996, with TELECOM ARGENTINA S.A. – STET FRANCE TELECOM S.A., as the sole and exclusive listed owner;

b) Federal Trademark TELECOM PERSONAL and design, registered in Argentina in the National Institute of Industrial Property, under registration Number 1’696,275, issued on October 21, 1998, in International class 16 covering for all classes, with application date on January 5, 1996, with TELECOM ARGENTINA S.A. – STET FRANCE TELECOM S.A., as the sole and exclusive listed owner;

c) Federal Trademark TELECOM PERSONAL and design, registered in Argentina in the National Institute of Industrial Property, under registration Number 1’696,278, issued on October 21, 1998, in International class 35 covering for all classes, with application date on January 5, 1996, with TELECOM ARGENTINA S.A. – STET FRANCE TELECOM S.A., as the sole and exclusive listed owner;

d) Federal Trademark TELECOM PERSONAL and design, registered in Argentina in the National Institute of Industrial Property, under registration Number 1’696,280, issued on October 21, 1998, in International class 37 covering for all classes, with application date on January 5, 1996, with TELECOM ARGENTINA S.A. – STET FRANCE TELECOM S.A., as the sole and exclusive listed owner;

e) Federal Trademark TELECOM PERSONAL and design, registered in Argentina in the National Institute of Industrial Property, under registration Number 1’696,285, issued on October 21, 1998, in International class 38 covering for all classes, with application date on January 5, 1996, with TELECOM ARGENTINA S.A. – STET FRANCE TELECOM S.A., as the sole and exclusive listed owner;

f) Federal Trademark TELECOM PERSONAL and design, registered in Argentina in the National Institute of Industrial Property, under registration Number 1’696,282, issued on October 21, 1998, in International class 42 covering for all classes, with application date on January 5, 1996, with TELECOM ARGENTINA S.A. – STET FRANCE TELECOM S.A., as the sole and exclusive listed owner;

Complainant is authorized by TELECOM ARGENTINA STET FRANCE TELECOM S.A. to use and operate the name and the brand TELECOM PERSONAL.

Complainant has an active presence on the Internet through "telecompersonal.com.ar" from which address its customers, prospective customers and public in general have access to the Website containing an introduction of TELECOM PERSONAL and its services.

The Respondent, Namezero.com, Inc., was founded in May 1999, and is an ICANN accredited registrar and a leading provider of domain name-related services for small businesses and individuals seeking to establish a permanent identity on the Web.

Respondent offers its members both free and fee-based services. When a member opts to receive their free service, they register the domain name requested by their member and provide the member with domain name management tools, including e-mail forwarding and URL forwarding, that allow the member to use the domain name in an easy, self-serve manner.

Although they give their members control over the domain name, each domain name registered as part of their free service lists Namezero as the record owner of the domain name in the WHOIS records. This arrangement gives Namezero needed flexibility in responding to disputes over the registered name and/or the content of the member’s website.

Each of the Domain Names subject to this administrative proceeding was registered as part of their free service.

When a member registers for a domain name using their free service, Namezero does not have the ability to screen registration requests for the millions of registered trademarks that exist today. If a name is available in the general pool of unregistered domain names, it can be registered by one of their members. Accordingly, without their knowledge, a domain name registered through their service may be identical or similar to the registered trademark of a third party.

The Respondent states that the Terms of Service governing their free service, which are conspicuously posted on their website and agreed to by each of their members during the registration process for the free service, contain several provisions intended to protect the intellectual property rights of third parties. The relevant sections are as follows: "Section 3.1 which provides all domain names registered through the Namezero Service are registered in their name. That as the record owner of these domain names, they may be named in a lawsuit if a selected domain name infringes on the trademark or service mark of a third party, or otherwise causes harm to a third party. That if a third party alleges trademark or service mark infringement or other harm in connection with the domain name, they may elect to (i) transfer the domain name to the member and/or cease providing the Namezero Service to their members in connection with the domain name, (ii) transfer the domain name to the third party, (iii) disable the use of the domain name by removing it from their DNS servers, (iv) delete or cancel the registration of the domain name, (v) proceed to arbitration in accordance with the rules established by the ICANN, (vi) proceed to litigation in federal, state or foreign court, or (vii) elect to pursue any other course of action reasonably designed to protect their interests. Section 3.2: That in the event that they elect to transfer the domain name to the third party, disable the use of the domain name or otherwise agree that such name will not be used for any purpose during the registration period, the members agree to relinquish all right, title and/or interest in and to the domain name with or without prior notice from them".

Respondent states further that their Trademark Policy, which is conspicuously linked from the southern masthead of their website’s hompage under "Trademark Policy", informs trademark holders of their policies and provides an easy method to contact Namezero in connection with a trademark dispute.

Respondent states that it takes pride in having a good working relationship with trademark holders and their counsel when disputes arise in connection with a domain name registered through their service. They strive to avoid unnecessary litigation and arbitration costs, and work with all interested parties to reach an amicable solution to any dispute.

Respondent currently has registered over 1.3 million domain names as part of their free service. That only a small fraction of these domain names (perhaps .01%) have been the subject of intellectual property-related disputes.

Under normal circumstances, they are able to amicably resolve disputes within five to seven business days of receiving a complaint. Namezero has been named in an administrative proceeding fewer than ten times, and in each case either the complaining party did not bother to contact Namezero prior to filing a complaint or, as in this case, correspondence was either lost or not routed to the responsible individuals within their company.

Under normal circumstances, if they agree that the domain name violates the intellectual property rights of the complaining party, they remove the name from their DNS servers, meaning that a "server not found" error message will appear whenever any person attempts to access the domain name on the Internet.

Respondent claims that occasionally the complaining party requests a transfer of ownership of the disputed domain name, and they are typically able to accommodate such requests.

 

5. Parties’ Contentions

A. Complainant

The Complainant alleged that :

- The Domain Names "telecompersonal.com" and "telecompersonal.net", used and registered by Respondent, are identical to the TELECOM PERSONAL trademark owned by Complainant in the United States and in Argentina.

- Respondent has no right or legitimate interests in respect of the domain names under dispute.

- Respondent does not have the registration nor the authorization to use the trademark TELECOM PERSONAL nor is it known by the name TELECOM PERSONAL, nor does such mark identify the business activity of Respondent.

- The domain name has been registered in order to prevent the owner of the trademark and service mark from reflecting the mark in a corresponding domain name.

- The domain name has been registered for the purpose of disrupting and damaging the business of Complainant, in the first place, by advertising the service of its competitor UNIFON (TELEFONICA COMUNICACIONES PERSONALES S.A.) through the pages accessed with the domain "telecompersonal.com" and now discrediting Telecom Personal S.A. with the pornographic content of the page to which the visitor accessing the relevant domain is directed.

- By Respondent using the domain name, they are intentionally performing actions to attract, for financial gain, Internet users to the Website by creating a likelihood of confusion with the complainant’s mark as to the affiliation and sponsorship of the Website and the products and services included in the Website under the domain name "telecompersonal.com"

- The Domain Names were registered primarily for the purpose of selling it to the Complainant, since some informal contacts have been occurring between the Respondent's member and the Complainant where the domains "telecompersonal.com", and "telecompersonal.net"were available for sale at US$5,000 each.

The Complainant has requested under paragraph 4(i) of the Policy, that the Administrative Panel issue a decision ordering that the contested Domain Names be transferred to it.

B. Respondent

Respondent did not contest Complainant’s allegations. In its February 17, 2001, Response and in its January 29, 2001, January 30, 2001, February 2, 2001, February 7, 2001, communications to the WIPO Center and to Complainant, Respondent expressed its desire to have the Domain Names transferred to the Complainant.

Pursuant to their standard dispute resolution policies, Respondent has made inquiries of the members who registered these domain names and have determined that the members do not have any pre-existing or other legitimate rights in the disputed domain names, or that they have otherwise violated their Terms of Service.

They stated that upon completion of their investigation, they promptly removed the names from their DNS servers and offered to transfer ownership of the domain names to Complainant at no charge (subject to withdrawal of the Complaint, as domain names subject to an administrative proceeding cannot be transferred by the Verisign Registry). That this offer has been made several times in written correspondence and in telephone conversations with Complainant over the past few weeks).

Although they do not agree that Respondent registered the domain names at issue in the administrative proceeding in bad faith (since the registration was performed at the request of their member), Respondent requested that the Administrative Panel award to Complainant ownership of the domain names.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy directs that the Complainant must prove the presence of each of the following elements: (i) that the Domain Names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and, (ii) that the Respondent has no rights or legitimate interests in respect of the domain names; and, (iii) that the Domain Names have been registered and are being used in bad faith.

The Panel considers that the Respondent by registering the contested domain names with NSI (an ICANN accredited domain name registrar), agreed to be bound by all terms and conditions of NSI's Service Agreement, and pertinent rules or policies and the Policy (incorporated and made a part of the Registration Agreement by reference). The Policy sets out that proceedings be conducted according to the Rules and the selected dispute-resolution service provider's supplemental rules, in the present case, the WIPO Supplemental Rules. Therefore, this dispute is within the scope of the above mentioned agreements and policy, and this Panel has jurisdiction to decide this dispute.

Furthermore, the Panel considers that by entering into the above mentioned Registration Agreement, the Respondent agreed and warranted that neither the registration of the domain name, nor the manner of its intended use will directly or indirectly infringe upon the legal rights of a third party. In addition, Respondent agreed that the resolution of a dispute arising under the registration agreement may result in the Respondent’s use of the domain name being suspended, cancelled or transferred.

The Panel considers that it is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that the parties and particularly the Respondent in domain name dispute cases be given adequate notice of proceedings initiated against them; that they have a fair and reasonable opportunity to respond, exercise their rights and to present their respective cases.

In this case, the Panel is satisfied that these proceedings have been carried out in compliance with such requirements, and particularly contemplating the notification of the filing of the Complaint and the initiation of these proceedings giving the Respondent a right to respond. That there is sufficient and adequate evidence confirming the above.

Respondent has confirmed in its response that it has no pre-existing or other legitimate rights in the disputed domain names and has not contested the allegations of Complainant. Furthermore, although Respondent indicated it did not believe it registered the domain names at issue in bad faith, since the registration was performed at the request of one of their members, this Panel finds that such company is nevertheless responsible as the acting and registering party, regardless of the fact they were executing mandates or performing acts contemplated within their corporate purposes, whether authorised or ordered as part of their contractual obligation to their customers or by the improper act of their officers or Directors. This Panel strongly believes that Respondent being an ICANN accredited registrar and a leading provider of domain name-related services, must be the first to honor the Uniform Domain Name Dispute Resolution Policy when registering domain names under their name. The fact that such registration is made at another party's request, does not release them from responsibility as this will also not occur when performing any other type of illegality.

This Panel, as directed by paragraphs 14(a) and (b) and 15 (a) of the Rules, shall render the decision on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and principles of law that it deems applicable. The Panel may draw such inference, as it deems appropriate on the basis of Respondent’s Response and give such weight, as it considers appropriate to the Complainant’s undisputed representations.

The Panel notes that the entire mark "TELECOM PERSONAL" is included in the Domain Names, the only addition, being the ".com" and the ".net" The addition of the phrase is non-descriptive and does not alter the value of the mark represented in the Domain Names. In addition, the ".com" and ".net" is required for registration of the Domain Names. This Panel finds that Respondent’s Domain Names are identical to the TELECOM PERSONAL trademark, to which Complainant has rights; and with respect to the addition "-net.com" this Panel finds that Respondent’s Domain Names are confusingly similar to the TELECOM PERSONAL trademark, to which Complainant has rights.

Furthermore, this Panel finds that there is no indication that the Respondent has any rights or legitimate interests in respect of the Domain Names. Respondent has not used or prepared to use the TELECOM PERSONAL Domain Names in connection with any bona fide offering of goods or services as contemplated under Paragraph 4(c)(i) of the Policy. Respondent is not commonly known by the Domain Names as contemplated under Paragraph 4(c)(ii) of the Policy, nor is Respondent making a legitimate noncommercial or fair use of the Domain Names as contemplated, under Paragraph 4(c)(iii) of the Policy. The above remains unchallenged, as Respondent did not contest Complainants allegations in this matter, and furthermore expressly confessed that they do not have any pre-existing or other legitimate rights in the disputed domain names.

The Panel also finds that Respondent has used and registered the Domain Names in bad faith, in particular but without limitation, pursuant to Paragraph 4 (b) (i) of the Policy in view of the fact that :

i. Respondent did not object to nor provide evidence to the contrary with respect to Complainant’s allegations that Respondent registered or acquired the Domain Names for the purpose of selling or otherwise transferring the Domain Names registration to the Complainant who is the owner of the trademark; pursuant to Paragraph 4 (b) (ii) of the Policy ;

ii. The registration of the domain names by Respondent were in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name; and, pursuant to Paragraph 4 (b) (iii) of the Policy;

iii. That Respondent's registration of the domain names was primarily for the purpose of disrupting the business of the Complainant.

The Panel considers that there is sufficient and adequate evidence confirming the above.

It is hereby noted that no settlement has been reached by the Parties and made known to this Panel prior to the rendering of this decision, which may eventually affect or give ground for termination of this administrative proceeding as provided for under paragraph 17(a) of the Rules, nor is this Panel aware of the existence or initiation of any other type of legal proceeding before a court of competent jurisdiction for independent resolution regarding the domain name dispute as contemplated under paragraph 4 (k) of the Policy.

 

7. Decision

Therefore, and in consideration of the complaint’s compliance with the formal requirements for this domain dispute proceeding, of the factual evidence and legal contentions that were submitted, to the conclusive confirmation of the presence of each of the elements contemplated in Paragraph 4(a)(i), (ii), and (iii) of the Policy, and on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and other applicable rules and principles of law, as directed by paragraphs 14(a) and (b) and 15(a) of the Rules, this Panel decides that:

(1) The Domain Names registered by Respondent are identical to the TELECOM PERSONAL trademark, to which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the "telecompersonal.com", "telecompersonal.net" and "telecompersonal-net.com" Domain Names; and

(3) The "telecompersonal.com", "telecompersonal.net" and "telecompersonal-net.com" Domain Names have been registered and are being used in bad faith by the Respondent.

Therefore, the Panel requires, pursuant to the provisions of Paragraphs 3(c) and 4(i) of the Policy, that the Domain Names "telecompersonal.com", "telecompersonal.net" and "telecompersonal-net.com" be transferred to Telecom Personal S.A., Complainant.

 


 

Pedro W. Buchanan
Presiding Panelist

Roberto Bianchi
Member Panelist

Dennis A. Foster
Member Panelist

Dated: March 29, 2001.

 

Источник информации: https://internet-law.ru/intlaw/udrp/2001/d2001-0015.html

 

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