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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tarjeta Naranja S.A. v. MrDominio.com and Alejandro San Jorge
Case No. D2001-0295
1. The Parties
Complainant is Tarjeta Naranja S.A., an Argentine corporation with its principal place of business at Sucre 151, 5000 Córdoba, Argentina (the "Complainant"), represented in this proceeding by Mr. Miguel N. Armando, Esq., of Noetinger & Armando, Buenos Aires, Argentina.
Respondents are MrDominio.com, an entity of an unknown nature and Mr. Alejandro San Jorge (the "Respondents"). According to the WHOIS database of NSI the address of MrDominio.com is at Genaro Perez 124, Córdoba, X 5000, Argentina, and Mr. San Jorgeґs address is at 7296 NW 44 Street, Miami, Florida 33166, U.S.A. According to Complainant, the actual address of Respondent Mr. Alejandro San Jorge is San Luis 470, Apartment 5, 5000 Córdoba, Argentina. In any case the WIPO Center notified the complaint to all available addresses of MrDominio.com and Mr. San Jorge.
2. The Domain Name and Registrar
The domain name at issue is "tarjetanaranja.com", registered with Network Solutions, Inc., of Herndon, Virginia, U.S.A ("NSI").
3. Procedural History
On February 28, 2001, a complaint in accordance with the ICANN Policy, its Rules and the WIPO Supplemental Rules was submitted by e-mail to the WIPO Center. On March 6, 2001, the complaint was submitted in hardcopy. On March 2, 2001, the Center acknowledged receipt of the electronic version of the complaint.
On March 7, 2001, the Center requested NSI for a verification of registration records. On the next day NSI sent its reply to the Center, confirming that the domain name at issue is registered with NSI in the name of MrDominio.com, that Mr. San Jorge is the administrative, technical and billing contact, that NSIґs service agreement version 5 is in effect, and that the domain name registration status is "Active".
On March 13, 2001, the Center notified to MrDominio.com and Mr. San Jorge the complaint and the commencement of the administrative proceeding. Hardcopies of the complaint (with enclosures) were sent to MrDominio.com at Genaro Perez 124, Córdoba (received on March 13, 2001), and to Mr. San Jorge at Suite 201-100332, 7296 NW 44 Street, Miami Florida 33100 USA (received on March 12, 2001). A hardcopy sent to Mr. San Jorge at San Luis 470, Apartment 6, Córdoba, could not be delivered because "recipient moved" . The complaint in electronic version (without enclosures) was successfully transmitted by the Center to email@example.com and to firstname.lastname@example.org on March 13, 2001. Inter alia Respondents were advised by the Center that the response was to be sent to the Center on or before April 1, 2001, and about the consequences of failing to submit a response under Rules, Paragraph 14. The Respondents having failed to submit a response, on April 2, 2001, the Center sent them the notification of respondent default. The Panel finds that the Center fully complied with its responsibilities in reasonably trying to notify the complaint (Rules, Paragraph 2(a)).
On April 6, 2001, having received Roberto A. Bianchiґs Statement of Acceptance and Declaration of Impartiality and Independence, the Center appointed him as a panelist. The decision was scheduled for April 19, 2001. The Panel finds that it has been properly constituted.
The registration agreement was done and executed in English. The complaint was submitted in English. Pursuant to Rules, Paragraph 11, this proceeding shall continue in English.
The Panel independently agrees with the Center's assessment of March 9, 2001, that the complaint is in compliance with the Policy, the Rules and the WIPO Supplemental Rules, and that payment of the fees was properly made.
4. Factual Background
The following facts and circumstances, because they have been alleged and satisfactorily evidenced by Complainant, and have not been contested by Respondent by its default, are being held as true by the Panel:
Tarjeta Naranja S.A. is a credit card company operating mainly in the Province of Córdoba, Argentina, which issues the "Tarjeta Naranja" credit card. The credit card was created in 1986, as a store purchase card, serving the purpose of identifying the account holders of a sports store named "Salto 96". Soon after that the card became a purchasing instrument which could also be used in other stores in Cordoba. By 1993, more than 100,000 cards had been issued. In 1995, one of main Argentine banks, Banco de Galicia, became its principal shareholder. Presently, Tarjeta Naranja S.A. has more than 500,000 active credit cards. More than 40,000 stores in the region where the company operates accept the "Tarjeta Naranja" card. In 1998, Tarjeta Naranja incorporated all the services provided by VISA card, enabling "Tarjeta Naranja" cardholders to use it in more than 14,000,000 stores worldwide.
"Tarjeta Naranja" leads the sector of regional credit cards in Argentina. "Tarjeta Naranja" is the preferred credit card of the people living in Cordoba. A search for the words "tarjeta AND naranja" carried out in "Yahoo.com.ar", the Argentine website of Yahoo! Inc., revealed that 16 out of the 20 first resulting categories refer to the credit card of Tarjeta Naranja S.A. This means that "Tarjeta Naranja" is a well-known service mark in Argentina, particularly in the region of Córdoba.
The main competitor of Tarjeta Naranja S.A. in the regional credit cards market is "Provencred". According to market research provided by Complainant, when asked about their preferences regarding a local credit card, 37% of the Córdoba population prefers "Tarjeta Naranja", while 23% prefers "Provencred". The third place corresponds to a credit card named "Kadicard", with 8% market shares.
Complainant owns the following Argentine trademark registrations:
· Registration N° 1.426.578, for the mark TARJETA NARANJA issued on March 31, 1993, covering all products included in international class 9. Such registration was originally issued in the name of Salto 96 S.A. and its assignment to Tarjeta Naranja S.A. was recorded on February 10, 1998.
· Registration N° 1.372.418, for the mark TARJETA NARANJA, issued on January 31, 1990, and renewed on May 3, 2000, under N° 1.792.495, covering credit cards in international class 16. The registration was originally issued in the name of Salto 96 S.A. and its assignment to Tarjeta Naranja S.A. was recorded on March 20, 1998.
· Registration N° 1.352.582, for the mark TARJETA NARANJA, issued on July 17, 1989, and renewed on September 30, 1999, under N° 1.755.302, covering all services included in international class 36. The registration was originally issued in the name of Salto 96 S.A. and its assignment to Tarjeta Naranja S.A. was recorded on October 31, 1997.
· Registration N° 1.426.279 for the mark TARJETA NARANJA, issued on March 31, 1993, covering all services included in international class 42. The registration was originally issued in the name of Salto 96 S.A. and its assignment to Tarjeta Naranja S.A. was recorded on February 10, 1998.
On June 4, 1999, the "tarjetanaranja.com" domain name was registered in the name of an entity called "MrDominio.com".
The trademark registrations and assignments of the TARJETA NARANJA marks in Complainantґs favor pre-date the domain name registration.
Service agreement version 5.0 of NSI incorporates the ICANN Policy by reference, which means that this Panel has jurisdiction to decide the instant case.
5. Parties’ Contentions
A) Complainant contends:
a) The disputed domain name fully incorporates Complainantґs trademark TARJETA NARANJA within the second-level domain name under the top level .COM, and consequently, the disputed Domain Name is confusingly similar to Complainantґs TARJETA NARANJA mark.
b) Respondent has no rights or legitimate interest in respect of the domain name, which constitutes a well-known mark in Argentina belonging to Complainant. Respondent is not using and has not demonstrated an intent to use the domain name in connection with a bona fide offering of goods or services. Respondent has not been commonly known by the domain name; and it is not making a legitimate noncommercial or fair use of the domain name, since its conduct is tarnishing the trademark and service mark TARJETA NARANJA.
c) The Domain Name has been registered and is being used by Respondent in bad faith. On April 16, 1998, Claimant Tarjeta Naranja S.A. issued a "Tarjeta Naranja" credit card in the name of Héctor Alejandro San Jorge. Upon information and belief, Héctor Alejandro San Jorge is the same person that, under the name Alejandro San Jorge, obtained the domain name registration. On March 18, 1999, Tarjeta Naranja S.A canceled the credit card of Mr. San Jorge due to non-payment of the purchases made with the card, and such cancellation was duly notified to Mr. San Jorge on said date. In spite of the efforts of Tarjeta Naranja S.A., Mr. San Jorge never paid his debt. Presently, the debt of Mr. San Jorge with Tarjeta Naranja S.A. is of $ 2,311.33. According to the information appearing in the Whois database, the registration of the domain name "Tarjetanaranja.com" by the defendant took place on June 4, 1999, that is, shortly after Mr. San Jorgeґs "Tarjeta Naranja" credit card was canceled due to non-payment.
d) At the time Respondent registered the domain name "tarjetanaranja.com" he had actual knowledge of Tarjeta Naranja S.A.ґs rights to the mark TARJETA NARANJA and registered the domain name in bad faith. Similarly, Respondent intentionally and willfully misrepresented to NSI that the registration of the domain name did not interfere with or infringe upon the rights of any third parties and that the domain names were not being registered for any unlawful purpose. Specifically, Respondent used the domain name to intentionally disrupt the business of a Claimant by attracting Internet users to his website under the domain name "tarjetanaranja.com" and then direct them through a hyperlink, to the website of Claimant's competitor, Provencred. Respondent's registration and use of the domain name meet the bad faith element set forth in Section 4(b)(ii) since the purpose of his registering the domain name "tarjetanaranja.com" is to prevent Claimant, who is the owner of the mark TARJETA NARANJA, from reflecting the mark in a corresponding domain name, specially taking into account the fact that Respondent is delinquent in the payment of his debts to Complainant.
Respondent is in default.
6. Discussion and Findings
As recently stated in WIPO Case D2001-0128 Ermenegildo Zegna Corporation, Lanificio Ermenegildo Zegna & Figli S.p.A., Consitex S.A. and Ermenegildo Zegna España S.A v. Ocxon Media S.A., also a default proceeding, according to the Rules, in case of failure by the respondent to provide a response to the allegations of the complainant – as in the present case - the Panel is directed to decide the administrative proceeding on the basis of the complaint (Paragraph 14 (a)), and "shall draw such inferences therefrom as it considers appropriate" (Paragraph 14 (b)).
A respondent has generally in his hands the opportunity to provide evidences refuting the claims and contentions of the Complainant; if he does not offer such evidence, it may be inferred that such evidences would not have been favorable to him, or that he finds the statements of the Complainant right, or else that his interest in the domain name is so scarce that it is not worth his while to respond. In any case, silence is a choice of the Respondent, so if he does bring doubts forward or contradicts the statements of the Complainant, the latter shall prove the three elements required by the Policy without further opposition than his own ability to explain them. (See: Franpin, S.A. v. Paint Tools, S.L,. case no. D-2000-0052; InfoSpace.com, Inc. v. Hari Prakash, case no. D-2000-0076; Easyjet Airline Company Ltd. v. Andrew Steggles, case no.
D-2000-0024; Bartecard Ltd. & Bartercard International Pty Ltd. v. Ashton-Hall Computer Services, case no. D-2000-0177 or Pomellato S.p.A. v. Richard Tonetti, case no. D-2000-0493).
Notwithstanding the above, the Panel must in any case establish whether the complaint succeeded in proving that each of the three elements listed in paragraph 4 (a) of the Policy are present (see Deutsche Bank AG v. Diego-Arturo Bruckner -WIPO case D2000-0277). Indeed, as held in Cortefiel S.A. v. Miguel Garcìa Quintas - WIPO case D2000-0140, the Panel should not decide in the complainant’s favor solely given the respondent’s default.
Identicality or Confusing Similarity
Through assignment certificates and registration certificates Complainant has evidenced sound rights in the trademark and service mark TARJETA NARANJA. All registration dates and assignments pre-date the registration of the domain name at issue.
The Panel finds that the domain name at issue is identical to the TARJETA NARANJA trademarks of the Complainant or, having in mind the suppression of the space between "tarjeta" and "naranja", and the addition of the gTLD ".com", the domain name is at least confusingly similar to Complainantґs marks. Complainant has accordingly proved that the first prong of the Policy (Paragraph 4(a)(i)) is present.
Lack of Rights and Legitimate Interests
Complainant is right that the defaulting Respondent has no rights to or legitimate interests in the domain name, which happens to be a well known mark belonging to Complainant in Argentina and particularly in the province of Córdoba, where the Respondent MrDominio.com has its address. Presently Respondent is not using and has not demonstrated an intent to use the domain name in connection with a bona fide offering of goods or services. Respondent is not commonly known by the domain name; and it is not making a legitimate noncommercial or fair use of it.
This lack of use has been independently checked by the Panel by way of a connection to the Internet conducted on April 6, 2001, at the "www.tarjetanaranja.com" website. The only text resulting from this connection reads as follows:
"www.tarjetanaranja.com" is under construction. "www.tarjetanaranja.com" will be ready soon! www.tarjetanaranja.com will be ready soon! We manage our Internet solutions at... zone edit... the newest way to control the Internet. It doesn't matter where you registered your domain name. ZoneEdit.Com allows you to manage ALL of your web sites with DNS, Url Forwarding, E-mail Forwarding, and Addressing using one central, easy-to-use web interface."
This means that for all practical purposes the website is not being used, which prevents any finding in Respondent's favor under Policy, Paragraph 4(c). Complainant has thus evidenced that the second limb of the Policy (Paragraph 4(a)(ii)) is present.
Registration in Bad Faith
Respondent Mr. San Jorge, a delinquent debtor of Complainant, registered the domain name corresponding to the credit card after Complainant cancelled Mr. San Jorgeґs credit card. Obviously Mr. San Jorge, having been a credit card holder of TARJETA NARANJA could not have ignored that TARJETA NARANJA was the name of the credit card issued by its creditor, the Complainant.
As to this fact one could conclude that Mr. San Jorgeґs abusive registration was due to vengeance or indignation, a motivation which in any case cannot be justified under the Policy. See WIPO Case D2000-0467 METRO BILBAO, S.A. v. Ignacio Allende Fernández at section 6.5 (c).
However an independent search by the Panel of NSIґs WHOIS database conducted on April 6, 2001, additionally showed that "MrDominio" is the registrant of "horacioguarani.com", "bancobisel.com" and "losnocheros.com", and that "MrDominio.com" is the registrant of "holdingsur.com" and "tarjetanaranja.com".
Banco Bisel is the name of a bank in Argentina. Horacio Guarani is practically identical to the name of Mr. Horacio Guarany, a famous folklore singer in Argentina. Los Nocheros is the name of a well-known group of folklore and melodic singers in Argentina. The WHOIS records of these registrations in the name of "MrDominio" and "MrDominio.com" show that such entities - through their addresses or contact details and persons - are prima facie connected with each other, or are the same entity. In any case they appear to be acting in concert in registering third partiesґ trademarks or personal names as domain names in order to prevent such parties to reflect their marks or personal names as domain names. These entities have engaged in a "pattern of such conduct", and therefore they have registered the domain name at issue in bad faith under Policy, Paragraph 4(b)(ii), stating:
"you have 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 you have engaged in a pattern of such conduct".
Complainant has proved that the domain name was registered in bad faith (Policy, Paragraph 4(a)(iii)).
Use in Bad Faith
As seen above the website corresponding to the domain name is presently not being used but for the posting of an "under construction" legend. Complainant has submitted documentary evidence that Respondent used the website corresponding to the domain name in bad faith at least on or before August 30, 2000. According to a printout submitted by Complainant (Exhibit 8) at accessing to the "www.tarjetanaranja.com" website just a single page appeared showing two images. The first one was the logo of the principal competitor of "Tarjeta Naranja", that is, Provencred. Such logo is a hyperlink which leads to the page of Provencred, "www.provencred.com". The other one was the logo of the credit card of the other competitor operating in the same market, that is, "Tarjeta Kadicard". Tarjeta Naranja S.A. has contacted its competitor Provencred S.A., and obtained assurances that the link between the Respondent's site and their own web site "www.provencred.com" was not authorized or approved by Provencred S.A. The Panel is satisfied that Provencred S.A. bears no responsibility whatsoever in Respondent's bad faith use of the domain name.
There is no evidence in the record that, at posting a hyperlink to the Provencred website, Respondent was aiming at a commercial gain. This prevents a direct application of Policy, Paragraph 4(b)(iv), stating:
"by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location".
Nor is Respondent presumably a competitor of Complainant, which prevents a direct application of Policy, Paragraph 4(b)(iii) stating:
"you have registered the domain name primarily for the purpose of disrupting the business of a competitor".
However, a Panel is authorized by the Policy to find that there is bad faith registration and use wherever a respondent, like in the instant case, incurs in relevant portions of the Policy description of bad faith circumstances, such as the disruption of business, the willful creation of a likelihood of confusion, and the intentional attempt to attract Internet users to the website of Provencred, Complainantґs main competitor. To link Internet surfers looking in their browsers for the well known mark of Complainant to a competitor's website is a typical bad faith use under the ample terms of Policy, Paragraphs 4(a)(iii) and 4(b).
The fact that Respondent is presently not posting the hyperlinks to Complainantґs competitors as he did eight months ago does not prevent a finding of bad faith use against him. In this respect the Panel shares the reasoning of the learned panelist in WIPO Case No. D2000-0021 The Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren, March 9, 2000, wherein it was said:
"The Panel is cognizant of the fact that ¶ 4,a(iii) uses the present tense when referring to use. The Panel believes that the term "is being used" does not refer to a particular point in time (such as when the Complaint is filed or when the Panel begins deliberations), but refers to the period of time following registration of the domain name at issue. See, Telstra Corporation Limited v. Nuclear Marshmallows, ICANN Case No. D2000-0003, ¶ 7.6, at 9. If at any time following the registration the name is used in bad faith, the fact of bad faith use is established."
Similarly, in the WIPO Case D2000-1679 Playboy Enterprises International, Inc. v. Victoriano Moreno Martín, February 23, 2001, this acting panelist stated:
"The Policy should not be construed as requiring that the bad faith use continues after the dispute has begun, or after these proceedings have commenced. That would be equal to grant to any respondent, allowing him to escape an unfavorable decision, the easy way to interrupt or eliminate any posting of contents on the website, leaving it inactive for all practical purposes. This interpretation must be disregarded, as an absurd one".
Accordingly the same reasoning applies in this case, where a previous confusion-seeking use of hyperlinks by Respondent has been presently changed to a simple legend stating that the website is "under construction".
Complainant has thus also succeeded in proving the bad faith use requirement (Policy, Paragraph 4(a)(iii)).
Because all three limbs of the ICANN Policy have been proved by Complainant to be present, the Panel requires, pursuant to Policy, Paragraph 4(i) and Rules, Paragraphs 14 and 15, that the registration of the "tarjetanaranja.com " domain name be transferred to Complainant, Tarjeta Naranja S.A.
Roberto A. Bianchi
Dated: April 10, 2001