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ADMINISTRATIVE PANEL DECISION
Anuncios en Directorios S.A. DE C.V. v. Michael Alvarez
Case No. D2002-0973
1. The Parties
The Complainant is Anuncios en Directorios S.A DE C.V., Mexico City, 14060, Mexico; represented by Jesús A. Molina Salgado, Mexico City, 0100, Mexico.
The Respondent is Michael Alvarez, Highland, UT 84003, USA; represented by Jon D. Corey and Jonathan A. Land, Quinn Emanuel Urquhart Oliver & Hedges, Los Angeles, California 90017, United States of America.
2. The Domain Names and Registrars
The disputed domain names are:
The domain names are registered with Intercosmos Media Group Inc. dba DirectNIC.com and Tucows, Inc.("Registrars").
3. Procedural History
This is an administrative proceeding pursuant to 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, approved by ICANN on October 24, 1999, ("the Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").
The complaint was filed by e-mail with the Center on October 19, 2002, and in hard copy on October 22, 2002. On October 22, 2002, the Center transmitted by e-mail to the Registrars a request for registrar verification in connection with the disputed domain names. On October 22, 2002, the Registrars confirmed that the Respondent is the registrant. On October 23, 2002, the Center notified complaint deficiency to the Complainant. The revised complaint was filed by e-mail with the Center on October 26, 2002, and in hard copy on November 4, 2002. The Center satisfied itself that the complaint complied with the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the complaint and the proceeding commenced on November 5, 2002. The Respondent timely filed the response by e-mail on November 25, 2002, and in hard copy on November 28, 2002. The Center appointed Miguel B. OґFarrell, Alan L. Limbury and Diane Cabell. The panel was properly constituted. The undersigned Panelists submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
Initially December 31, 2002, was the date scheduled for the issuance of the Panel decision. As the panelists received the materials submitted by the parties on December 24, 2002, in accordance with para. 10 (c) of the Rules for Uniform Domain Name Dispute Resolution Policy, the Administrative Panel extends the decision to January 31, 2003. The language adopted in this proceeding is English.
4. Factual Background
Complainant owns the following trademarks:
SECCION AMARILLA (Reg. 518283 Class 16 1996; 518284 Class 35 1996; 518282 Class 38 1996);
SECCION AMARILLA AND DESIGN (Reg. 519951 Class 16 1994; 609.268 Class 16 1999; 609269 Class 16 1999, 519450 Class 35 1994; 603461Class 35 1999; 603462 Class 35 1999; 514459 Class 38 1994; 610664 Class 38 1999, 610665 Class 38 1999);
SECCIÓN AMARILLA EN LINEA...EN MEXICO AND DESIGN (Reg. 559.306 Class 16 1997; 555775 Class 35 1997; 557360 Class 38 1997);
SECCION BLANCA (Reg. 493.461 Class 16 1994; 493460 Class 35 1994, 493459 Class 38 1994);
YELLOW PAGES (Reg. 513.819 Class 16 1994; 555937 Class 38 1994);
GUIA TELEFONICA AMARILLA (Reg. 480.521 Class 16 1994);
PAGINAS AMARILLAS (Reg. 533.918 Class 16 1994; 680956 Class 38 1994);
YELLOW PAGES DIRECTORIES (Reg. 566269 Class 35 1994, 555942 Class 38 1994, 495259 Class 9 1994);
GUIA TELEFONICA AMARILLA (Reg. 480522 Class 35 1994, 480520 Class 38 1994);
SECCION AMARILLA AND DESIGN (Reg. 106248 Class 16 1999, 106247 Class 35 1999);
SECCION AMARILLA AND DESIGN (Reg. 47517 CC Class 16 2000, 47518 CC Class 35 2000);
SECCION AMARILLA AND DESIGN (Reg. 2273297 Classes 16, 35, 38 1997).
Complainant has applied for the registration of the mark SECCION AMARILLA AND DESIGN in various countries like: Colombia, Costa Rica, El Salvador, Panama and Venezuela.
Respondent registered the following domain names:
<seccionamarilla.com> registered in November 1997
<seccionamarilla.org> registered in August 2000
<laseccionamarilla.com> registered in August 1997
<laseccionamarilla.net> registered in January 2000
<seccionblanca.com> registered in March 2000
<laseccionblanca.com> registered in December 2000
<yellowdir.com> registered in January 2000
<yellowpagedir.com> registered in January 2000
<yellowpagedirectories.com> registered in January 2000
<laguiaamarilla.com> registered in August 2000
<superpaginasamarillas.com> registered in August 2000
Complainant is a Mexican company, originated in 1897, the year it first published a telephone and address directory in Mexico. The Complainant forms part of the Yellow Pages Publishers Association (YPPA) which has more than 300 affiliated publishing companies in the United States, Canada, Germany, Spain and Australia. Complainant provides its services mainly in Mexico, however, it is associated with various companies in numerous countries around the world (members and non-members of the YPPA) to provide their services worldwide. The services offered by Complainant and its associates bear trademarks owned by Complainant and/ or by one or more of the associated companies.
5. Parties’ Contentions
Complainant asserts that:
No trademark application and or/ registered trademarks were found in the name of Respondent in United States Patent and Trademark Office’s web site nor in the Mexican Institute of Industrial Property’s web site. Nor were there were any matches, links, references or websites found by Yahoo! Inc.’s search engine from which it can be determined that the Respondent has any rights and/or legitimate interests in the domain names involved in the complaint.
Respondent had and has knowledge of the existence of Complainant’s activities and trademarks. He registered the domain names with the purpose of selling them to the Complainant for the amount of $2.3 million dollars and proposed, as alternative, an association/investment in Respondent’s business project. The aforesaid sum of $ 2.3 million dollars is in excess and goes beyond any amount that could be expended for registering and maintaining the domain names. Respondent intended to make a profit and this means that he intended a commercial gain. The fact that the domain names are identical and/or confusingly similar shows that the Respondent "would be intending for commercial gain misleadingly to divert consumers and /or to tarnish the trademarks at issue".
To prevent a potential complaint in year 2001, the Respondent uploaded a "passive web site" to direct some of the domain names, which shows a typical front page advising that the web site is under construction. Others were directed to a web site at www.bestcardrates.com and to an apparent URL of a credit card company, which is not in service.
The Respondent has not been commonly known by the domain names.
The domain names are not in use, as they are identifying passive web sites.
Respondent’s bad faith registration and use is also evidenced by the fact that he has not made a legitimate use of the domain names since they were registered over two and five years ago.
Finally, Complainant requests that the contested domain names be transferred to Complainant.
Respondent denies Complainant’s contentions and alleges that:
Complainant does not have exclusive rights in any of the words which appear in the domain names. Such phrases are generic.
Respondent has created and developed a business plan that would target a Spanish and Portuguese –speaking audience. He has solicited businesses, created a corporation (Seccion Amarilla Inc.), and built a web site that is in the final stages of development. In early 2001, following the decline of the "Internet gold rush", several of Respondent’s potential venture capital investors withheld the necessary funding. In November 2001, Respondent activated a data collection and solicitation web page at <seccionamarilla.com> and used proprietary marketing and advertising techniques to attract Seccion Amarillaґs target market.
Respondent has initiated trademark protection for the SeccionAmarilla.com logo that was first used when the solicitation web page was activated in November 2001. He considered seeking trademark protection for the domain names but decided not to do so, based on advice from counsel that the phrases were generic and descriptive.
Respondent had begun building his business in 1997, and on June 14, 2002, well before Complainant brought this action, incorporated Seccion Amarilla, Inc. Respondent contends that Complainant’s SECCION AMARILLA SI FUNCIONA...Y FUNCIONA MUY BIEN mark was not published for opposition in the U.S. until June 1999.
Complainant’s assertion that the Respondent’s domain names resolved to "passive" web sites is inaccurate. The fact that Respondent used two domain names to resolve to <bestcardrates.com>, another Internet company owned by Respondent, is not the evidence of lack of rights.
Respondent did not register the domain names at issue for the purpose of selling them to Complainant. If Respondent acquired the domain names with the purpose of selling them to Complainant, presumably Respondent would have initiated contact with Complainant sometime within the three years after the registration.
6. Discussion and Findings
Under paragraph 15(a) of the Rules, the Panel must decide this conflict 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.
To qualify for cancellation or transfer, a Complainant must prove each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identity or Confusing similarity
The Panel finds that all the conflicting domain names are either identical or confusingly similar to at least one of Complainant’s trademarks.
In connection with the identity or confusing similarity, the Panel finds that the question of whether the terms and phrases that integrate the domain names are generic, could not be answered without considering each particular case and trademark. Two prior WIPO Panels (WIPO Case Nos. D2000-0489 and D2000-0490) have found that "The fact that all over Europe, as well as in the U.S., Australia, Canada, India, Russia and other countries, business directories are known under the name yellow pages precludes the Complainant’s claim to exclusivity, based on its trademarks, trade name or any other intangible asset. Some descriptive terms have to remain in the public domain in order for the information society to run smoothly." In the United States the courts have determined that "yellow pages" is a generic term that is not protectable as a trademark. This is why Complainant had to disclaim any exclusive right in the phrase "seccion amarilla" in order to register the trademark SECCION AMARILLA SÍ FUNCIONA...Y FUNCIONA MUY BIEN AND DESIGN. On the other hand, Complainant registered the word trademarks mentioned in paragraph 4 without any disclaimers in Mexico and therefore has exclusive rights in such trademarks in Mexico. Since the Panel does not have to pass a judgment on the validity of trademarks that are registered under Mexican law, the Panel does not find that the terms under discussion are generic in that country.
B. Rights or Legitimate Interests
The Panel finds that the Respondent has been making demonstrable preparations to use the domain names in connection with a bona fide offering of goods or services. The Panel accepts that the Respondent’s business proposal is a genuine one. Respondent has proved that he prepared a business plan, solicited business to participate in his directory service, discussed his business plan with a wide range of people, signed contracts, initiated trademark protection for Seccion Amarilla logo, created a corporation; all before any notice of the dispute.
The fact that in August 2000, both parties exchanged e-mails regarding the domain names does not constitute in any way notice of the dispute. The evidence supplied by the Respondent rebuts Complainant’s assertion that after such exchange of e-mails the Respondent merely pretended to be engaging in development of the domains simply to prevent a potential complaint. In any case, Respondent has utterly proved he had been making demonstrable preparation to use the domain names before the exchange of e-mails during August 2000.
Taking into consideration that in the United States the terms involved in this dispute are considered generic and that the Respondent resides in the said country, it can be concluded that in good faith the Respondent supposed that no claim could be made against him. Respondent has proved that he had a bona fide business plan to create a one-stop portal for Internet/World Wide Web/On line yellow pages, white pages and classified advertisements and listings that would target a national and world wide Spanish, English and Portuguese-speaking audience. Initially the portal would spread throughout the U.S. Hispanic community; eventually it would fill the Spanish-speaking world. Respondent’s objective was to provide to the Hispanic business community e-commerce solutions, web tools and information designed specifically to help Hispanic companies to promote their business on line. Consequently the Panel finds that the Respondent has legitimate interest in respect of the conflicting domain names.
C. Registered and Used in Bad Faith
No finding of registration and use in bad faith can be made against the Respondent.
The Respondent did not acquire the domain names with the purpose of selling them to Complainant. Respondent has proved he created a business plan and was soliciting investors. Complainant contacted Respondent in August 2000, three years after Respondent registered <seccionamarilla.com> and <laseccionamarilla.com>, saying that it was interested in the domain names. In response, Respondent did not offer to sell the domain names for US$ 2.3 million dollars but rather to sell the business he had developed or to work together on a joint venture. If Respondent registered the domain names with the purpose of selling them to Complainant, it could be assumed that Respondent would have contacted Complainant sometime within the three years after he registered <seccionamarilla.com> and <laseccionamarilla.com>. The fact that the Complainant contacted the Respondent in first place reinforces the idea that the Respondent did not register the domain names in bad faith.
In the decision of WIPO Case No. D2000-0223, Meredith Corp. v. City Home Inc. it was said that "The fact that Respondent is seeking substantial money for what it believes to be a valuable asset is not tantamount to bad faith. Rather, it tends to show a reasonable business response to an inquiry about purchasing a business asset where Respondent had already expended time and money to develop a new part of its business (...)" In accordance with said decision, the Panel finds that the Respondent has not acted in bad faith.
The Panel finds that determing whether some of the domain names are passive web sites or not is irrelevant, since the Respondent has utterly proved he has acted in good faith.
Complainant has failed to establish two of the three elements of the Policy; namely: that the Respondent lacks legitimate interests and rights and that the Respondent registered and is using the conflicting domain names in bad faith. The Panel therefore declines to order the transfer of the conflicting domain names to the Complainant.
Miguel B. OґFarrell
Alan L. Limbury
Dated: January 22, 2003