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Arbitration and Mediation Center
Caracol Primera Cadena Radial Colombiana S.A. v. ABCSites, Inc.
Case No. D2003-0880
1. The Parties
The Complainant is Caracol Primera Cadena Radial Colombiana S.A., a company with its principal place of business in Bogota, Colombia (hereinafter the "Complainant"). The Complainant is represented in this proceeding by Mr. Alfredo Vásquez Villarreal, from the law firm Vásquez, Villarreal Abogados, of Bogota, Colombia.
The Respondent is ABCSites, Inc., of Miami, Florida, United States of America (hereinafter the "Respondent"). The Respondent is represented in this proceeding by the law firm Lott & Friedland of Coral Gables, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name is <caracol.com>, and is registered with Network Solutions, Inc. of Herdon, Virginia, United States of America (hereinafter the "Registrar").
3. Procedural History
The Complaint was electronically filed with the WIPO Arbitration and Mediation Center (the "Center") on November 4, 2003, and in hardcopy on November 12, 2003.
On November 6, 2003, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 11, 2003, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing contact details for the administrative, billing and technical contact.
On November 18, 2003, 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 2(a) and 4(a), the Center formally notified the Respondent of the Complaint and this proceeding began on November 19, 2003. According to Rule 5(a), the due date for the Response was set as December 9, 2003.
The Response was received by the Center on December 10, 2003.
The Center appointed Messrs. Roberto Bianchi and Marino Porzio and Ms. Lynda Braun as panelists on December 29, 2003. Mr. Porzio was appointed to act as Presiding Panelist. The Panel finds that it was properly constituted. Each member of the Panel has submitted a Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, Paragraph 7.
Upon request of the Panel, the original date set by the Center for the issuance of this decision was extended until February 4, 2004.
4. Factual Background
The facts relevant to the current dispute are set out in the Complaint and in the Response. Considering the evidence attached thereto, the Panel finds the following facts to have been established.
The Complainant, Caracol Primera Cadena Radial Colombiana S.A., is a Colombian broadcasting network. The Complainant’s first use of CARACOL as a trade name took place in 1950. The term "caracol" was formally included in the network’s corporate name on November 7, 1956. The Complainant’s trademark registrations for "CARACOL" in Colombia date back to 1992.
Since then, the Complainant has registered the mark "CARACOL" and variants thereof in five other countries (See Complaint’s Annex 28 to 35).
The evidence obtained by the Panel from the Respondent’s website, "www.abcsites.com", shows that the Respondent operates a number of websites featuring what it calls a "Network of Companies and Incubator Sites reaching US-Hispanic & Latin America Markets", which furnish a variety of information relating to business, travel, news, shopping malls and domain names for sale.
The Respondent registered the disputed domain name, <caracol.com>, on November 4, 1997. The domain name resolves to an active website with links, among others, to several other sites regarding shopping malls, hotels and apart-hotels which consist of or include the word caracol.
5. The Parties’ Summarized Contentions
The following are the allegations made by the Complainant in this proceeding:
• The Complainant has been using, continuously and without interruption, the expression "caracol" as the essential part of its trade name and trade dress, for the last 55 years, in an open and public manner, in relation to radio and television broadcasting and programming, communications, advertising and related goods and services.
• Caracol S.A. has exercised due care and diligence in obtaining legal protection for its intellectual property rights for the word caracol, procuring and maintaining the corresponding trademark and service mark registrations in its home country and in several other countries.
• The constant use of the trade name and trademarks in 182 broadcasting stations in Colombia plus 54 owned broadcasting stations outside Colombia, and the simultaneous broadcast of "W F:M: de Caracol" in Colombia, the United States of America and Spain, results in "CARACOL" being considered a notorious and well known trademark, deserving special protection because of the increased probability of confusion.
• The argument about the possibility of coincidence to justify the existence of similarities between "CARACOL" and other names or marks is unsustainable, bearing in mind the strength of "CARACOL" as a trademark and the lack of any degree of connection between the covered goods and services and the generic, descriptive or evocative characteristics of the term.
• The Respondent is obviously engaged in the business of registering well known marks or names belonging to third parties as domain names in its own name, with the sole purpose of transferring the domain name registrations to its rightful owners, or to their competitors, for valuable consideration far in excess of the Respondent’s out of pocket costs directly related to the domain name.
• Circumstances clearly indicate that in order to improve the possibility of sale of the domain name, the Respondent has intentionally attempted to attract Internet users to the Respondent’s website and other on-line locations, creating a likelihood of confusion with the Complainant’s name, trade names, trademarks and service marks.
• The Complainant has a superior right on the word caracol as a domain name.
• Each of the three elements specified in Paragraph 4(a) of the Policy are applicable to the domain name subject to this dispute:
1. <caracol.com> is identical to the Complainant’s name, trade names, trademarks, service marks and domain names acquired, used or registered by the Complainant before the Respondent registered the disputed domain name, and such identity results necessarily in likelihood of confusion, in the terms of the first element of Paragraph 4(a) of the Policy.
2. The Respondent is not a licensee of the Complainant, and the Complainant has not given the Respondent express or implied authorization to use its names or trademarks. There is no evidence of the Respondent’s use, or preparations to use, the disputed domain name in connection with a bona fide offering of goods and services, or of the Respondent’s making legitimate non-commercial or fair use of the domain name in question, in the terms of the second element of Paragraph 4(a) of the Policy. Moreover, the Respondent has no rights or legitimate interests in the domain name <caracol.com>, and its efforts in merely registering it and stockpiling it together with others for subsequent sale fails to constitute a bona fide use which could be likely to create any such legitimate rights.
3. With respect to the third element of Paragraph 4(a) of the Policy, it is evident that the Respondent has intentionally attempted to attract, for financial gain, Internet users to the Respondent’s website at "www.caracol.com", by creating confusion with the Complainant’s names, trademarks, service marks and domain names, primarily for the purpose of selling, renting or otherwise transferring it to competitors or to the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name, clearly constituting proof of bad faith registration and use by the Respondent.
The following are the allegations made by the Respondent in this proceeding:
• Complainant can not meet its burden of establishing that Respondent does not have a legitimate right or interest to use the word caracol in its domain name as required by Paragraph 4(a)(ii) of the Policy. Said word is a generic noun over which nobody enjoys exclusive rights.
• Respondent was first to register the generic term as a domain name and did so with the intent to promote its website. The "first-come-first-served" rule regarding domain name registrations of generic domain names is clearly applicable here.
• Since its registration, Respondent has made continuous bona fide use of the domain name in promoting an informational and commercial website, several years prior to receipt of the notice of this dispute. Accordingly, the Respondent has a legitimate interest in respect to the use of the word in its domain name.
• Complainant has failed to present evidence that:
1. Respondent is a competitor of Complainant;
2. Respondent registered or acquired <caracol.com> primarily for the purpose of selling, renting or otherwise transferring the domain name registration to Complainant;
3. Respondent registered <caracol.com> in order to prevent Complainant from registering it;
4. Respondent registered <caracol.com> primarily for the purpose of disrupting the business of Complainant; or
5. Respondent is using <caracol.com>, intentionally or otherwise, in an attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
• Therefore Complainant has failed to prove that Respondent has registered or used the domain name in bad faith, as required by Paragraph 4(a)(iii) of the Policy.
• Complainant has failed to meet its burden with regard to two of the three elements it is required to prove under Paragraph 4(a) of the Policy.
• Complainant has acquiesced to Respondent’s use of the domain name <caracol.com>
for almost six years without ever objecting. By failing to act within a reasonable
period of time from the date of registration, Complainant has acquiesced to
Respondent's registration and use of the subject domain and has waived any rights,
tenuous as they may have been, to request that the domain name be transferred.
See XFM Limited v. Intervid Limited, WIPO
Case No. D2000-1298 (January 22, 2001); Grodberg v. Rugly Enterprises
LLC, NAF Case No. FA000100009275 (March 2, 2000).
• Complainant's failure to act for nearly six years is also indicative that the great harm it claims to have suffered as a result of Respondent's registration of the domain name is actually non-existent.
6. Discussion and Findings
In order for the Complainant to prevail and have the disputed domain name transferred to it, the Complainant has to meet the burden to prove the following (the Policy, Paragraphs 4(a)(i-iii)):
- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name was registered and is being used in bad faith.
Identical or Confusingly Similar
The domain name registration was made according to Respondent on November 4, 1997. According to the Complaint, section III, and Annex 3, the registration was made on September 18, 2002. A search in "www.uwhois.com" conducted by this Panel on January 14, 2004, showed that the registration record for <caracol.com> was created on "04-Nov-1997".
In any case, Complainant has evidence of owning rights on the "CARACOL" trademark at least since 1992, according to the registration certificates of Colombia numbers 117387, 117388, 117389 and 117390, of renewal of trademark "CARACOL and design" for international classes 38, 9, 35 and 16, valid from August 31, 1992 to August 31, 2002. See Annexes 17 to 20 of the Complaint.
A Mexican registration, certificate Number 422209, evidences a service mark registration on September 1992 of the trademark "CARACOL", in the name of Complainant, for international class 38.
Therefore, the Panel finds that the disputed domain name is identical to Complainant’s
registered trademark "CARACOL" (See Annex 13 to 35 of Complaint).
The addition of the designation <com> in the domain name does not render
it non-identical. See The State of the Netherlands v. Goldnames Inc.
WIPO Case No. D2001-0520 (June 3, 2001).
Accordingly, the first element of Paragraph 4(a) of the Policy has been met
by the Complainant.
Rights or Legitimate Interests
Complainant contends that Respondent lacks any rights or legitimate interests on the domain name. In particular, says Complainant, Respondent was never licensed or authorized by Complainant to use the CARACOL trademark. Respondent replies that caracol is a generic noun, and that nobody has a superior right to it as a domain name than a registrant who registers it first. However, Respondent on the one hand contends that "caracol" is generic, and on the other hand states having chosen <caracol.com> as a domain name because of the Plaza Caracol Mall in Cancún, Mexico, and because Respondent intended to publish information on malls of the world on its websites. This Panel cannot share the view that a "dictionary word" cannot be registered as a mark in order to distinguish certain goods or services. caracol ("snail" in Spanish) can well be generic in relation to snails, but it certainly is not generic in respect of radio and TV broadcasting and telecommunication services as those provided by Complainant. Much less can caracol be generic since Complainant has shown that in this particular case it corresponds to the acronym of "Cadena Radial Colombiana". This fact cannot be altered simply because Respondent shows that a number of businesses include the word caracol in their trade names.
Respondent has not alleged that it is known by the domain name (its corporate name being "ABCSites, Inc."). Respondent simply seems to show that other third parties may have such rights or legitimate interest in that they are called and may be known by names containing the word caracol , but such parties and businesses are not parties in this proceeding. Thus the circumstance of Paragraph 4(c)(ii) of the Policy is not present in this case ("you (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"). Nor has Respondent shown that before any notice of the dispute, it has used or intended to use the domain name in a bona fide offering of goods or services (the Policy, Paragraph 4 (c)(i)), or that it made a noncommercial or fair use of the domain name (the Policy, Paragraph 4 (c)(iii)). In fact, the only use that appears to have been made is the offering for sale of the <caracol.com> domain name as posted on the "www.paralaventa.com" website (See Annex 40 to the Complaint) and the posting of a web page on the "www.caracol.com" website. According to Annex 3 to the Response, this web page basically consists of (i) a list of links with many informational items, such as "topics", "personal", "news on terrorism", "news from Cuba, Venezuela", "Reports by the Government of Colombia", "Chambers of Commerce of Colombia, Cuba, Venezuela and Miami"; and (ii) various links to websites which include the word caracol, such as "Plaza Caracol in Cancún, Mexico", "www.hotelcaracol.com", "Rancho Caracol, The Ultimate Mexico Hunting Experience" and "Caracol de Plata, Reconocimiento Iberoamericano al Mensaje de Beneficio Social". Even if the purpose of posting such links seems to suggest that caracol is a generic, or at least a very common word, it shows that there are other companies or entities which might be entitled to use the word caracol in a domain name, which is quite different from showing that it is Respondent who has rights or a legitimate interest in the domain name. The web page as shown in Annex 3 to the Response, has been printed on December 9, 2003, that is after the dispute was known to the Respondent. Having regard to all these circumstances, this Panel concludes that Respondent lacks rights or a legitimate interest in the domain name at issue. Accordingly, the second element of Paragraph 4(a) of the Policy has been met by the Complainant.
Registered and Used in Bad Faith
Complainant contends that "it is evident that the Respondent has intentionally attempted to attract, for financial gain, Internet users to the Respondent’s website at "www.caracol.com", by creating confusion with the Complainant’s names, trademarks, service marks and domain names, primarily for the purpose of selling, renting or otherwise transferring it to competitors or to the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name, clearly constituting proof of bad faith registration and use by the Respondent." However Complainant has not proven that the registration of the domain name was made primarily with the purpose of transferring rights on the domain name for an amount in excess of out of pocket costs related to the domain name, (the Policy, Paragraph 4(b)(i), which is a circumstance of bad faith registration as required by the Policy, Paragraph 4(a)(iii). The offer for sale of the domain name in "www.paralaventa.com" is not by itself proof that the domain name was registered with the primary purpose of selling it to Complainant or to a competitor of Complainant. Furthermore, the word caracol is a generic word, meaning "snail" in Spanish. This genericness makes it less likely that the Respondent registered it with the intention to take advantage of the similarity between it and Complainant’s trademark.
Complainant has demonstrated with Annex 12 to the Complaint that it owns offices in Miami, Florida, USA, and that Complainant is broadcasting radio with an AM station in Miami, Florida, the city where Respondent has its address. However, Complainant has not shown that Respondent knew that there was a broadcasting company operating under the name CARACOL, or that because of the existence of CARACOL as an AM broadcaster in Miami or because of the existence of Caracol’s office in Miami, Respondent came to know or should have come to know Complainant’s trademark before the domain name was registered, that is before November 1997. In any case it seems to be true that "Respondent has never mentioned Complainant’s name in any of its websites, including "www.caracol.com" and has never linked to, or advertised, any entity that provides radio or television broadcasts". See Affidavit of Jaime de los Ríos, Jr., of December 9, 2003, paragraph 14, attached as Annex 1 to the Response. Complainant fails to show that Respondent’s registration or use of the domain name was specifically aimed at Complainant’s trademark and service mark, with the purpose of preventing Complainant to reflect its mark in a corresponding domain name. The Policy, Paragraph 4(b)(ii) requires "a pattern of such conduct", that is a similar conduct in respect of other domain names corresponding to trademarks or service marks belonging to third parties. Even if Complainant has certainly demonstrated with Annex 41 to the Complaint that <altolascondes.com> refers to Alto Las Condes, a well-known shopping center or mall in Santiago, Chile, belonging to Cencosud S.A.; or that per Annex 42 to the Complaint <cadenalco.com> contains the trade name CADENALCO, a major retail chain in Colombia, or that <galeriaspacifico.com> refers to Galerías Pacífico, a well-known shopping center in downtown Buenos Aires, Argentina, this Panel agrees with Respondent that Complainant failed to prove that --with the exception of the <caracol.com> domain name itself-- the other domain names registered in the name of Respondent are trademarks or service marks belonging to third parties, which could easily have been done by means of a simple trademark research in the corresponding countries.
Accordingly, the third element of Paragraph 4(a) of the Policy has not been met by the Complainant.
Because Complainant failed to prove registration and use in bad faith as required under the Policy, Paragraph 4(a)(iii), it is unnecessary for this Panel to examine Respondent’s allegation that Complainant failed to object or to act for some six years after the registration made in 1997, and therefore acquiesced to the registration and use of the domain name at issue.
The Panel has found that Complainant, Caracol Primera Cadena Radial Colombiana S.A., has failed to establish that Respondent, ABCSites, Inc., has registered and used the disputed domain name in bad faith, within the meaning of Paragraphs 4(a)(iii) and 4(c)(i-iii). For the foregoing reasons, the Complaint is denied.
Date: January 30, 2004