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and Mediation Center
Lexicon Marketing Operating Luxembourg, S.A.R.L v. Facundo de Giorgio
Case No. D2006-0730
1. The Parties
The Complainant is Lexicon Marketing Operating Luxembourg, S.A.R.L, California, United States of America, represented by Sheppard, Mullin, Richter & Hampton, United States of America.
The Respondent is Facundo de Giorgio, Puerto Rico, United States of America,
represented by Dennis B. Parces, Esq., United States of America.
2. The Domain Name and Registrar
The disputed domain name <computacionsinbarreras.com> is registered with
InnerWise, Inc. d/b/a ItsYourDomain.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2006. On June 12, 2006, the Center transmitted by email to InnerWise, Inc. d/b/a ItsYourDomain.com a request for registrar verification in connection with the domain name at issue. On July 6, 2006, InnerWise, Inc. d/b/a ItsYourDomain.com 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 on July 13, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was August 2, 2006. The Response was initially filed with the Center in Spanish on July 13, 2006, with English translation filed on August 4, 2006.1
The Center appointed Frederick M. Abbott as the sole panelist in this matter on August 8, 2006. The Panel finds that it was properly constituted. 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.
On August 17, 2006, at the request of the Panel, the Center transmitted Administrative Order No. 1 to the parties. That Order requested additional evidence from each party, to be furnished within 10 calendar days of the date of transmission of the Order. On August 28, 2006, the Center transmitted to the Panel the respective responses of Complainant and Respondent received in a timely manner.
The language of this administrative proceeding is English. Original evidentiary
documents are, in a number of instances, in the Spanish language. Translations
have been provided by the parties in some cases. Pursuant to its authority under
Paragraph 11(a) of the Rules, the Panel has considered both English and Spanish
versions of documents.
4. Factual Background
Complainant is recorded assignee of registration of the word trademark INGLES SIN BARRERAS on the Principal Register of the United States Patent and Trademark Office (USPTO), Reg. No. 1,627,082, dated December 11, 1990, in International Class (IC) 16, covering “printed publications, namely books, manuals, brochures, and magazines in the field of English language instruction”. Said registration claims date first use and first use in commerce of May 13, 1988 and states that “The English translation of the word in the mark is English without barriers”. Complainant also is recorded assignee of registration of the word trademark and service mark INGLES SIN BARRERAS on the Principal Register of the USPTO, Reg. Nos. 1,657,270 and 2,205,186, dated September 17, 1991 and November 24, 1998, in ICs 9 and 41, respectively, covering pre-recorded media in the field of English-language instruction and educational services with respect to English-language instruction. Said registrations include substantially identical statements of translation. The trademark assignment from the president of Complainant, Jose Luis Nazar, to Complainant is dated January 17, 2003. (Complaint, Exhibit C-E)
Complainant is registrant of the word trademark COMPUTACION SIN BARRERAS on the Principal Register of the USPTO, Reg. No. 3,080,598, dated April 11, 2006, in IC 16, covering “educational instructional materials, namely, books, workbooks, guides, dictionaries, reference materials, phrase books, pre-recorded audio tapes, video tapes, DVDs, compact discs, and CD-ROMs, in the field of computers, computer instruction, computer repair and computer software and hardware, sold as a unit” (id., Exhibit F). Such Registration claims data of first use and first use in commerce of November 2005. This registration disclaims exclusive right to use “computacion” apart from the mark as shown, and translates the Spanish wording as “computation without barriers”. Registration of the aforesaid mark followed the grant by the USPTO of Complainant’s petition for cancellation (filed June 19, 2004) of the same mark held by Jose de Giorgio (Cancellation No. 92043412, granted December 8, 2004) (id., Exhibit J).
Complainant has not submitted evidence of trademark registrations outside the United States.
Complainant advertises and sells instructional materials and services under the INGLES SIN BARRERAS mark in the United States and in other countries. Complainant invests heavily in television direct response advertisement. According to one source, in 2004 Complainant spent $80 million and was the leading advertiser on Spanish-language television.2 (Complaint, Exhibit H). Complainant asserts that it advertises and sells outside the United States, but has provided only indirect evidence of advertising and sales outside the United States. A description of Complainant by one of its investors describes Complainant as “the leading direct marketing company serving the Hispanic community in the United States and abroad”. Complainant has provided a Declaration of its Associate Counsel stating that in 2002, Complainant commissioned a study by Bain and Company which “concluded that over 95% of Hispanic households in America recognized the INGLES SIN BARRERAS® brand. The Bain Study also concluded that consumers recognize third-party brands outside of the INGLES SIN BARRERAS® brand which sell educational materials under names that include the descriptive term ‘Inglйs’“ (Declaration of Nicolas Ospina, Complaint, Exhibit I). Complainant did not submit any portion of the Bain and Company study to the Panel.
Complainant operates a commercial Internet web site at ”www.inglessinbarreras.com” (Complaint, Exhibit M).
Complainant states that it currently markets products under the identifiers “Carreras Sin Barreras”, in connection with educational workforce materials, “Crйditos Sin Barreras”, in connection with educational materials in the field of personal finances, “Salud Sin Barreras” in connection with educational materials in the field of health and nutrition, and “Viva Sin Barreras” in connection with mail order catalog services (Complaint, paragraph 19). Complainant has not submitted direct evidence of such marketing. Complainant has not asserted registration of trademarks or service marks in connection with such products.
According to the Registrar’s Verification, Respondent is the registrant of the disputed domain name <computacionsinbarreras.com>. According to an IYD WHOIS report furnished by Complainant, the record of registration of the disputed domain name was created on November 6, 2003 (Complaint, Exhibit A). Respondent asserts that the disputed domain name was initially registered by Jose de Giorgio, his father, prior to the end of 1998 (Response), and that registration was subsequently renewed by Respondent. In response to a specific request from the Panel in Administrative Order No. 1, Respondent failed to furnish evidence of the asserted 1998 registration.
Respondent asserts that he has acted with respect to the disputed domain name on behalf of his father, Jose de Giorgio, a resident and national of Argentina with computer expertise. During the period from 1998 through 2001, Jose de Giorgio resided in the United States. Respondent’s counsel has submitted evidence in the name of Jose de Giorgio in response to a request from the Panel directed to Respondent. In light of the evidence submitted in this proceeding, including e-mail correspondence in which Respondent and Jose de Giorgio negotiate with third parties with respect to the same subject matter, the Panel will treat Respondent and Jose de Giorgio as part of a family enterprise. In consequence, acts of Jose de Giorgio with respect to the disputed domain name will be treated as acts of Respondent.
Respondent registered “Computacion Sin Barreras” as a fictitious business name with the State of Florida Department of State on August 14, 1998, Reg. No. G9822600085 (Reply to Administrative Order No. 1 (hereinafter “Respondent’s Reply”), Exhibit A.3
Respondent registered the trademark and design COMPUTACION SIN BARRERAS in the Commonwealth of Puerto Rico, Reg. No. 55946, dated September 10, 2001, claiming date of use (“Fecha de Uso”) of January 5, 2000. In that registration, Respondent disclaimed protection for “computacion” except for use in the mark as shown. (Respondent’s Reply, Exhibit F).
Respondent registered the trademark and design COMPUTACION SIN BARRERAS on the Register of Trademarks in Argentina, Act No. 2348356, granted February 23, 2006, in International Class 16. The application for such registration was transmitted by Respondent’s Argentine trademark counsel on May 20, 2004 (Respondent’s Reply, Exhibits B-D).
Respondent asserts that an educational course on use of computers was first developed by Jose de Giogio in Argentina in mid-2001, and sold there by Telefonica de Argentina (under the name “Manual Educativo de Telefonica”). Later in 2001, Respondent entered into an agreement with On Line Soft, Inc. of Miami, Florida (and its principal, Mr. Javier Merello) to market a software package in the United States under the name “Computacion sin Barreras”, which included several additional interactive instructional CDs relating to Microsoft application programs, and which were approved and certified by the Microsoft Corporation. This enterprise was unsuccessful. There is evidence that some copies of the software package under the name “Computacion sin Barreras” were sold by “Software Store” of Puerto Rico to one customer (“PC@Home”) from April 2002 through March 2003, but the evidence is not clear as to whether these were sales to third parties or sales between Respondent-controlled entities. (Response and Respondent’s Reply, Exhibit G)
According to Respondent, in early 2004, Mr. Merello of On Line Soft approached Complainant with a proposal for marketing a software package under the name “Computacion Sin Barreras” because Complainant did not yet offer a computer course. These negotiations were unsuccessful. In April 2004, Complainant directly approached Respondent with an offer to purchase the COMPUTACION SIN BARRERAS trademark already registered by Respondent at the USPTO, as well as the disputed domain name. Complainant ultimately offered to purchase all of Respondent’s rights in the “Computacion sin Barreras” identifier for $20,000, which offer Respondent rejected. Respondent sought either a $100,000 lump-sum payment, or a $25,000 upfront payment plus a royalty on Complainant’s sales of the software package.
According to Respondent, Mr. Merello was displeased by the direct contact between Complainant and Respondent. As a consequence, when Complainant initiated its trademark cancellation proceeding against Respondent at the USPTO in June 2004, Mr. Merello (whose address was used on the trademark registration) did not forward notice to Respondent. Respondent consequently failed to respond in the USPTO proceeding. (Response)
In its Complaint, Complainant did not refer to any contact with Respondent prior to Complainant’s transmission (through outside counsel) of a cease and desist demand to Respondent dated September 27, 2005 (Complaint, Exhibit L). In response to Administrative Order No. 1, Complainant submitted a Declaration of its Associate Counsel, which included information based on his review of files and discussion with his predecessor in-house counsel. According to that Declaration, Complainant first became aware of Respondent’s use of “Computacion sin Barreras” in connection with a line of computer courses in 2003. Complainant states that it first attempted negotiations with Mr. Merello of On Line Soft in September 2003. It does not indicate which party initiated the negotiations. It states “[Complainant] first considered a joint venture as an alternative to litigation. However, after a year of negotiations, On Line Soft refused to surrender its use of the term “computacion sin barreras”. As a result, [Complainant] severed negotiations with On Line Soft.”
The Declaration goes on to state that Complainant decided to commence direct negotiations with Respondent, resulting in Respondent’s demand for $100,000 and Complainant’s counteroffer of $20,000. The negotiations failed.
During the course of negotiations via e-mail, Respondent stated:
“Mi proyecto comenzу allбa por el aсo 1998, cuando registre en los EE.UU. como nombre de fantasнa, Computaciуn sin Barreras. Luego registre tambiйn la pagina Web, www.computacionsinbarreras.com y finalmente cuando decidн que mi proyecto lo llevarнa adelante considerбndolo de largo plazo, seguн todos los pasos necesarios y correspondientes para patentarlo como marca registrada en EE.UU. Puerto Rico y Argentina, lugares йstos, donde tengo relaciones comerciales. En los ъltimos 6 meses, sin proponйrmelo, he recibibo propuestas similares a la vuestra y todas se frustraron, porque nadie quiso reconocerme participaciуn por curso vendido. Resumiendo, lo que quizбs ninguno pueda entender, es que luego de esperar por mas de seis aсos y estando a 90 у 120 dias de poder comercializar un producto totalmente propio y siendo la marca que he registrado, lo ъnico que me asegurarб mis primeras ventas, que la propuesta para ceder todos estos derechos en forma definitiva, sin ningъn tipo de participaciуn y asн desistir de mis proyectos en estos tres paнses, debe ser mucho mas tentadora que las hasta ahora recibidas.” [underlines not shown]
Complainant has translated this passage as follows: “My project started in 1998 when I registered in the US, as a fantasy name ‘Computacion sin Barreras’. After that I registered the webpage www.computacionsinbarreras.com and finally when I finally decided to push my project forward I did all the steps necessary to register the marc [sic] in the US, Argentina and Puerto Rico, in these places I have commercial relations. In the last 6 months, without even having the intention, I have received similar offers to yours, but they have all been frustrated because nobody wanted to recognize any royalties. In summary, what nobody understands is that after waiting for more than six years and being 90 to 120 days from promoting a product that is totally mine, and because the mark I have registered is the only factor that will make my first sales possible, is that the prospect of giving up these rights definitively, without any royalties, and giving up my projects in three countries needs an offer more tempting than the ones I have received.”
Respondent has used a web page design which is headed with the banner “Bienvenidos al mundo de www.computacionsinbarreras.com, ‘La manera mбs fбcil de aprender computacion’“, which may be translated as “Welcome to the world of www.computacionsinbarreras.com, ‘The easiest way to learn computing”. Complaint, Exhibit K. (Translation by Panel)
Complainant’s home page is headed “Ingles sin Barreras, Video-Maestro de Ingles Conversacional”, which may be translated as “English without Barriers, Video Instructor for Conversational English”. Id., Exhibit M. (Translation by Panel)
The background for each Complainant’s and Respondent’s home page is blue and white, and each include black and yellow lettering and design.
The Registration Agreement in effect between Respondent and InnerWise, Inc.
d/b/a ItsYourDomain.com subjects Respondent to dispute settlement under the
Policy. The Policy requires that domain name registrants submit to a mandatory
Administrative Proceeding conducted by an approved dispute resolution service
provider, of which the Center is one, regarding allegations of abusive domain
name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant asserts rights in the trademark and service mark INGLES SIN BARRERAS based on use in commerce and evidenced by registration at the USPTO. Such rights are based on use commencing as early as May 13, 1988. Complainant asserts common law trademark and service mark rights in CARRERAS SIN BARRERAS, CREDITO SIN BARRERAS, SALUD SIN BARRERAS and VIVA SIN BARRERAS. Complainant refers to these collectively as its SIN BARRERAS family of marks. Complainant asserts rights in the trademark COMPUTACION SIN BARRERAS as evidenced by registration in 2006.
Complainant alleges that the disputed domain name <computacionsinbarreras.com> is confusingly similar to INGLES SIN BARRERAS, to its SIN BARRERAS family of marks, and is identical and confusingly similar to its COMPUTACION SIN BARRERAS mark. Complainant argues that SIN BARRERAS is the distinctive part of its family of trademarks. It asserts that Respondent registered the disputed domain name more than 13 years after Complainant’s application for federal registration of INGLES SIN BARRERAS, and more than 15 years after its first use of that mark, to take advantage of the distinctive SIN BARRERAS part of the mark.
Complainant asserts that INGLES SIN BARRERAS is a famous mark, well-known throughout the United States and other countries among the relevant public. Complainant alleges that by adding the descriptive prefix “Computacion” to its distinctive SIN BARRERAS suffix, Respondent has sought to take unfair advantage of its mark(s).
Complainant argues that “Based upon the strength of the INGLES SIN BARRERAS Famous Mark” and superior rights it was successful at the USPTO in obtaining cancellation of Respondent’s registration of COMPUTACION SIN BARRERAS as a mark.
Complainant argues that Respondent’s web site is nearly identical to Complainant’s primary web site, supporting its contention that Respondent registered the disputed domain name to deliberately take advantage of consumer confusion with Complainant’s family of marks.
Complainant indicates that Respondent has no rights or legitimate interests in the disputed domain name. It states that it has not authorized Respondent to use its famous mark(s), and that Respondent was not commonly known as Computacion sin Barreras. Complainant asserts that Respondent’s loss of its US trademark registration is “a further example of its lack of legitimate rights” in the disputed domain name. Complainant alleges that Respondent has not engaged in legitimate non-commercial or fair use of the disputed domain name. Finally, Complainant argues that Respondent has not made a bona fide offer of goods or services “because Respondent is not selling authorized goods or services, but rather is using Complainant’s trademark to create a false impression of affiliation between itself and Complainant …”
Complainant alleges that Respondent registered and is using the disputed domain name in bad faith. Complainant argues that Respondent intentionally copied the overall look and feel of Complainant’s web site to trade off Complainant’s goodwill. Complainant further argues that Respondent intentionally registered and used the disputed domain name to attract Internet users to Respondent’s web site by creating the false impression that users had reached and were purchasing courses related to Complainant’s courses. Complainant states that the famous character of its mark indicates that Respondent sought an increased likelihood of consumer confusion.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to it.
Respondent argues that it has rights or legitimate interests in the disputed domain name.
Respondent asserts that it began using the identifier “Computacion Sin Barreras” when it registered this as a fantasy name in Florida in 1998. Respondent indicates that it has registered the COMPUTACION SIN BARRERAS trademark in Puerto Rico and Argentina, and has used that mark in Puerto Rico and Argentina. It argues that it consequently has rights in the trademark and the disputed domain name.
Respondent contends that it did not have notice of the USPTO proceeding to cancel its registration of the COMPUTACION SIN BARRERAS mark.
Respondent states that it developed an educational package of interactive software which it proposed in mid-2001 to offer for sale in the United States under the computacion sin barreras name, although its initial project was not successful. It argues that through On Line Soft it entered into negotiations in early 2004 with Complainant with a view towards cooperative marketing of its computer course under the Computacion Sin Barreras name.
Respondent alleges that a degree of similarity of between its web site and Complainant’s web site derives from the fact that it was negotiating with and expected to be a business partner of Complainant. It suggests that it initially designed its web site in light of this prospect, and not to take advantage of potential consumer confusion.
Respondent indicates that its offer to sell its rights in the COMPUTACION SIN BARRERAS mark and the disputed domain name were good faith business proposals, and do not reflect bad faith.
Respondent asks the Panel to reject Complainant’s
request for transfer of the disputed domain name.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this Administrative Proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
Complainant and Respondent have each filed initial and supplemental submissions. The Panel is satisfied that Respondent was given adequate notice of these proceedings.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondent’s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has rights in the trademark and service mark INGLES SIN BARRERAS based on evidence of use in commerce and registration at the USPTO. The INGLES SIN BARRERAS mark was registered in 1990, claiming first use in commerce in 1988. Complainant’s rights in the INGLES SIN BARRERAS mark date from at least as early as 1990.4
Complainant has submitted evidence that INGLES SIN BARRERAS is a well-known or famous mark in the United States and other countries. The evidence presented by Complainant includes a reference to its advertising budget and market-leading status in a news report, a reference to its market-leading status as a direct marketer by one of its investors, and a Declaration by its Associate Counsel with regard to the contents of a market survey commissioned by Complainant. Although the indirect nature of this evidence is less than ideal, Complainant’s assertion that Ingles Sin Barreras is a well-known or famous mark among the Hispanic community in the United States has not been challenged by Respondent. For purposes of this proceeding, the Panel accepts that the INGLES SIN BARRERAS trademark and service mark is well known among the Hispanic community in the United States, including Puerto Rico.
Complainant has not indicated the date at which it claims its INGLES SIN BARRERAS mark first became well-known. The news report regarding its high-volume of advertising refers to spending in 2004. The “Bain Study” which is referred to in a declaration is said to have been commissioned in 2002, although it does not state when the study was completed. The study is said to show that 95% of Hispanic households in the United States recognize the INGLES SIN BARRERAS brand. From this, it is reasonably conceivable that the INGLES SIN BARRERAS mark was well-known in the United States by 2002.
Complainant has not submitted evidence from which the Panel may conclude that the INGLES SIN BARRERAS mark is well-known in Argentina. There is no evidence of trademark registration by Complainant in Argentina or any other country in Latin America. There is no evidence of advertising or promotion by Complainant in Argentina. There is no evidence of consumer recognition of Complainant’s mark in Argentina. The Panel concludes that Complainant has failed to establish that the INGLES SIN BARRERAS mark is well-known outside the United States, and particularly in Argentina.5
Complainant has rights in the trademark COMPUTACION SIN BARRERAS based on evidence of registration at the USPTO. That registration was granted on April 11, 2006.6 Registration at the USPTO establishes a presumption of rights in a trademark. That presumption arises upon registration. For purposes of this proceeding the Panel assumes that from April 11, 2006, Complainant has rights in the COMPUTACION SIN BARRERAS trademark.
Respondent asserts that Complainant was able to obtain cancellation of Respondent’s previous registration of COMPUTACION SIN BARRERAS at the USPTO because Respondent did not receive notice of the proceeding against it. It is not, however, for this Panel to remedy an alleged defect in notification of the cancellation proceeding (which by Respondent’s own evidence occurred because of its falling out with a business partner). Respondent has not presented clear and convincing evidence in this proceeding that it has rights in the COMPUTACION SIN BARRERAS mark in the United States (for example, based on prior use in commerce) that might lead the Panel to consider the presumption of Complainant’s rights in that mark rebutted.
Complainant further asserts common law trademark rights in CARRERAS SIN BARRERAS, CREDITO SIN BARRERAS, SALUD SIN BARRERAS and VIVA SIN BARRERAS. It has done so apparently in order to support its claim of rights in a “SIN BARRERAS family” of marks. However, Complainant has submitted no evidence of actual use in commerce of these alleged common law marks, or even third party references to use of these marks in commerce. The Panel does not have an adequate evidentiary basis for determining that Complainant has common law rights in CARRERAS SIN BARRERAS, CREDITO SIN BARRERAS, SALUD SIN BARRERAS and VIVA SIN BARRARAS. It rejects Complainant’s assertion of rights in those marks in the present proceedings.7
Complainant has established that it has rights in one well-known trademark and service mark, INGLES SIN BARRERAS, and that this mark was well-known in the United States at least by 2002. Complainant has established that it has rights in the trademark COMPUTACION SIN BARRERAS, and that these rights arose as of April 11, 2006.
Complainant’s COMPUTACION SIN BARRERAS mark
The disputed domain name <computacionsinbarreras.com> is identical for purposes of the Policy to Complainant’s COMPUTACION SIN BARRERAS mark registered in the United States. Therefore, Complainant has satisfied the first element of the Policy with respect to the COMPUTACION SIN BARRERAS mark. That is, the disputed domain name is identical to a trademark in which Complainant has rights. However, the conflict between the disputed domain name and Complainant’s COMPUTACION SIN BARRERAS mark in the United States arose only as of April 11, 2006. ’’
Complainant’s INGLES SIN BARRERAS mark
Complainant asserts that the disputed domain name <computacionsinbarreras.com> is confusingly similar to its famous INGLES SIN BARRERAS mark.
“Ingles” is a generic term referring in Spanish to the English language.8 “Sin barreras” in Spanish means “without barriers” in English. The phrase “ingles sin barreras” appears descriptive of a Spanish-language based instruction course teaching the English language.
The United States
Complainant has demonstrated that the phrase INGLES SIN BARRERAS has acquired secondary meaning and is associated by a large segment of the Hispanic community in the United States with Complainant’s products and services. Complainant’s INGLES SIN BARRERAS is well known among the relevant market in the United States.
Complainant asserts that the suffix “sin barreras” is the distinctive element of its trademark, and that the relevant consumer community will associate other product identifiers in combination with this suffix as originating with Complainant. Thus, consumers will assume that “Computacion Sin Barreras” is a product that originates with Complainant because the common descriptive term “Computacion” is combined with Complainant’s distinctive suffix, “sin barreras”.
Confusing similarity between two identifiers is principally assessed based on visual impression, sound and meaning. Other factors, such as the degree of similarity between the goods or services on which the identifiers are used, are taken into account. With respect to the INGLES SIN BARRERAS trademark and the <computacionsinbarreras.com> domain name, two of three terms are identical. There is a substantial degree of similarity between the terms taken in their entirety. The sound of the two identical terms is the same, and the meaning of the two identical terms taken in context is the same. In the descriptive sense, “Ingles Sin Barreras” and “Computacion Sin Barreras” share a substantial common meaning of an instructional experience that can be undertaken without difficulty.
In light of the fact that Complainant has widely advertised its product Ingles Sin Barreras as a course of instruction in the United States, it would be reasonable for consumers in the United States to assume that “Computacion Sin Barreras” is a course of instruction on another subject matter, also originating with Complainant.
The well-known character of Complainant’s INGLES SIN BARRERAS mark is important to this determination. Hispanic consumers in the United States are familiar with television advertisement for Complainant’s product. They are likely to assume that another course of instruction product using the suffix “sin barreras” originates with the holder of the INGLES SIN BARRERAS mark.
Analysis of confusing similarity between the trademark INGLES SIN BARRERAS and the disputed domain name <computacionsinbarreras.com> is different with respect to Argentina.
From a descriptive and semantic standpoint, use of the term “Sin Barreras” or “Without Barriers” in connection with a course of instruction is not distinctive until the suffix acquires secondary meaning. There is no evidence on the record of this proceeding that Complainant has advertised its INGLES SIN BARRERAS mark on television in Argentina, as it has in the United States. There is no evidence regarding consumer recognition of the mark in Argentina. As a consequence, there is no evidence that Internet users in Argentina would assume that a product using the “sin barreras” suffix originates or is associated with Complainant.
Based on the evidence submitted in this proceeding, from the standpoint of Internet users in Argentina, the disputed domain name <computacionsinbarreras.com> would not be associated with Complainant and its products.
Conclusion regarding Complainant’s INGLES SIN BARRERAS mark
The Panel determines that the disputed domain name <computacionsinbarreras.com> is confusingly similar to Complainant’s INGLES SIN BARRERAS mark in so far as the United States is concerned. From the standpoint of the Policy, Complainant satisfies the first element of the Policy with respect to the INGLES SIN BARRERAS mark since there is no requirement that confusing similarity between a complainant’s trademark and a disputed domain name transcend national borders. The Panel observes that Complainant has not demonstrated that the disputed domain name is confusingly similar to a mark in which it hold rights in Argentina, and this is relevant to the issue of Respondent’s rights or legitimate interests.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you 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 (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 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.” (Policy, paragraph 4(c)).
Paragraph 4(c) of the Policy does not expressly limit
a respondent with respect to the national jurisdiction in which it may establish
rights or legitimate interests in a disputed domain name. Two independent parties
may hold trademark rights in different national jurisdictions and each may,
on that basis, be able to demonstrate rights or legitimate interests under the
Policy in the same domain name. Nonetheless, in some administrative proceedings,
panels have ignored registrations of trademarks that were determined to have
been undertaken solely or predominantly for purposes of avoiding an adverse
finding under the Policy (See, e.g., Madonna Ciccone, p/k/a Madonna
v. Dan Parisi and “Madonna.com”, WIPO
Case No. D2000-0847). Whether acquisition of trademark rights was undertaken
in good faith, or as a bad faith artifice to unfairly take advantage of a trademark
holder in another jurisdiction, will depend upon the specific context of the
In this proceeding, Respondent’s activities with respect to Complainant’s trademark in the United States do not establish rights or legitimate interests. However, Respondent has made a prima facie case that its activities in Argentina establish rights or legitimate interests in the disputed domain name, and Complainant has not rebutted that presumption.
Commonly Known by the Name
The United States
With respect to the United States, Respondent’s first argument, in effect, is that it was commonly known by the domain name when it registered and began to use it.
Respondent’s first claims use of the term “Computacion Sin Barreras” in connection with registration in 1998 of that term as a fictitious business name in the State of Florida. However, while such registration may support Respondent’s claim that it intended to use the term “Computacion Sin Barreras” in business, it is not evidence of actual use in business of that name. This registration does not establish that Respondent was commonly known as “Computacion Sin Barreras” (or <computacionsinbarreras.com>) in 1998.9
Respondent registered COMPUTACION SIN BARRERAS as a trademark in Puerto Rico in 2001, claiming first use of January 5, 2000. Neither Respondent nor Complainant has submitted detailed legal argument concerning the significance for this proceeding of Respondent’s trademark registration in Puerto Rico. 10 However, it appears that trademark registration in Puerto Rico has essentially the same significance as registration of trademarks in states of the United States.11 Federal registration of Complainant’s COMPUTACION SIN BARRERAS trademark establishes a presumption of exclusive rights throughout the United States, including Puerto Rico. A third party may establish that it is a senior user and rebut the presumption of exclusive rights at least as to some geographic locations. Respondent has submitted some evidence of sales of a computer program under the name “Computacion Sin Barreras” in Puerto Rico from April 2002 to March 2003. The Panel does not consider evidence of the few sales for which invoices were provided is sufficient to establish that Respondent was in fact the senior user of the COMPUTACION SIN BARRERAS trademark, particularly since Complainant was able to cancel Respondent’s US federal registration of that trademark. Nor does that limited evidence of sales demonstrate that Respondent was “commonly known” by the COMPUTACION SIN BARRERAS mark or the disputed domain name in early 2003.
The evidence in this proceeding establishes that the disputed domain name was registered by Respondent on November 6, 2003.
According to Respondent’s statements, it developed the web site on which it has offered to sell a software program under the COMPUTACION SIN BARRERAS mark while it was negotiating with Complainant in 2004. It was not known by the disputed domain name on the basis of Internet sales in the United States prior to that time.
From the standpoint of the United States, Respondent was not commonly known by the disputed domain name when it registered and began to use it in a manner which conflicted with Complainant’s rights in its US trademark.
Respondent has registered the trademark COMPUTACION SIN BARRERAS in Argentina. Registration was granted in February 2006, based on Respondent’s application in May 2004.12 There is no evidence in this proceeding that Complainant has challenged Respondent’s trademark registration in Argentina, if it was aware of it, and Complainant has not submitted any legal arguments to the Panel regarding that registration.
Respondent registered the disputed domain name in November 2003. It has operated a commercial web site identified by that domain name, using the term “Computacion Sin Barreras” in connection with the offering of products. There is no evidence on the record of this proceeding of actual sales of Respondent’s course of computer instruction in Argentina.13 However, Respondent’s web site may be viewed in Argentina under the domain name, and the trademark is being used there in connection with an offering of goods. Countries maintain different standards with respect to what constitutes use of a trademark for purposes of securing and maintaining valid registration. While the matter has not been addressed by either party, Argentina may allow use of a mark as a trade name to satisfy its use requirement.14 Without expressing an opinion on that specific question, absent some definitive evidence that Argentina would treat Respondent’s trademark as invalid notwithstanding its recent registration, the Panel determines that Respondent holds trademark rights in Argentina with respect to the mark COMPUTACION SIN BARRERAS.
Respondent is the holder of the trademark registration for the mark COMPUTACION SIN BARRERAS in Argentina, and; Respondent is using the disputed domain name to offer products for sale under that trademark in Argentina. Unless some exceptional factors are present, this should establish that Respondent has rights or legitimate interests in the disputed domain name in so far as Argentina is concerned.
The Panel must consider whether Respondent’s activities with respect to Argentina are a “sham” undertaken as a pretext to take advantage of Complainant’s trademark rights in the United States.
On one hand, Respondent’s family enterprise includes at least one national of Argentina, Jose de Giorgio, who resides in that country. He has registered the COMPUTACION SIN BARRERAS trademark in the country of his nationality and residence. The evidence indicates that he is the (or an) author of the computer course of instruction offered under the disputed domain name. Through April 2004, correspondence between Complainant and Respondent was friendly, by all appearances, and would not seem to imply that Respondent should be worried about the validity of its US-registered trademark. Respondent was the holder of trademark registration at the USPTO for the mark COMPUTACION SIN BARRERAS. Complainant did not initiate its USPTO cancellation proceeding until June 2004, while Respondent applied to register its trademark in Argentina in May 2004.
On the other hand, Respondent negotiated with Complainant in the United States regarding its US trademark registration and the disputed domain name through April 2004. Those negotiations appear to have finally terminated in mid-May 2004, when Complainant rejected Respondent’s counteroffer. Thus, Respondent was preparing its application for registration of the COMPUTACION SIN BARRERAS trademark in Argentina at precisely the same time it was attempting to obtain a substantial payment from Complainant for its domain name and trademark in the United States. Respondent might have had some concern about whether it would be able to maintain its rights in the domain name based on the US trademark registration.
The evidence does not permit a conclusive determination regarding Respondent’s motives for registering the COMPUTACION SIN BARRERAS trademark in Argentina. There is some indication that Respondent was seeking a mechanism to protect its US-related interests in the disputed domain name. Yet, in the absence of more conclusive evidence, the Panel is unwilling to determine that Respondent’s activities in Argentina were exclusively or predominantly designed to take unfair advantage of Complainant with respect to the disputed domain name by establishing “sham” trademark rights in Argentina.15 Complainant has not carried its burden of proving that Respondent lacks rights or legitimate interests in the disputed domain name with respect to Argentina.
It is essential to point out that Respondent may not have rights to sell its computer program under the COMPUTACION SIN BARRERAS trademark in the United States. Complainant may be able to sue Respondent for infringement of Complainant’s trademark in the United States, and it might be able to recover monetary damages. Without prejudice to any options the Complainant may have in Argentina in relation to the Respondent’s mark, that does not mean that Respondent’s activities in Argentina are infringing Complainant’s rights for the purpose of a determination under the Policy.
The Panel determines that Respondent has rights or legitimate interests in the disputed domain name because it has a trademark rights in that name in Argentina and it is doing business in Argentina under that name.
Use in Bona Fide Offering Prior to Notice
Respondent has also argued that it made preparations to use and use of the disputed domain name in connection with a bona fide offering of goods prior to notice of a dispute with Complainant.
The United States
The question when a dispute arose in this proceeding is difficult to answer. On one hand, the Panel has determined that Complainant’s INGLES SIN BARRERAS trademark was well-known in the United States at the time Respondent registered the disputed domain name in November 2003. When a party registers a domain name which is confusingly similar to a well-known trademark it is effectively on notice that this registration will be disputed by the trademark holder.
In this case, in late 2003 or early 2004, Complainant commenced negotiations with Respondent regarding first, a potential joint venture, and second, acquisition of the disputed domain name and trademark rights. The e-mail record of correspondence between the parties gives no indication of a “dispute” concerning Respondent’s entitlement to the disputed domain name. Only when negotiations had failed at the end of April 2004 did Complainant initiate a “dispute”. Specifically, Complainant on June 19, 2004, filed with the USPTO a petition for cancellation of Respondent’s registration of the COMPUTACION SIN BARRERAS trademark.16
As a practical matter, from the standpoint of the United States, the precise point at which the dispute arose is not material. Because the disputed domain name is confusingly similar to Complainant’s well-known mark in the United States, Respondent’s preparations and offers to sell a computer program in the United States under that trademark are not bona fide.
Respondent registered the disputed domain name in November 2003. Complainant provided notice of a dispute with respect to trademark rights in the United States in June 2004. It did not expressly provide notice of a dispute with respect to trademark rights in Argentina prior to initiation of this dispute. However, trademark registration was not granted to Respondent in Argentina until March 2006.
Complainant sent a cease and desist demand to Respondent with respect to the disputed domain name in September 2005. This constitutes notice of a dispute for purposes of Argentina as well as the United States.
Respondent created a computer program, established a website and offered the computer program for sale in Argentina (over the Internet) prior to September 2005. Complainant has not established that it has trademark rights in the mark INGLES SIN BARRERAS in Argentina or that its product is well-known in Argentina. The analysis regarding the bona fide nature of Respondent’s offer for sale of products for Argentina is different than analysis for the United States. In respect to Argentina, Respondent appears not to have been seeking to take advantage of Complainant’s mark. There is no evidence that Complainant has trademark rights in Argentina. From this standpoint, Respondent made a bona fide offering of goods under the disputed domain name in Argentina prior to notice of the dispute with Complainant. This also establishes rights or legitimate interests in favor of Respondent, absent some exceptional circumstance.
There is no conclusive evidence that Respondent’s activities with respect to the offering of products for sale in Argentina is undertaken merely to take advantage of Complainant’s trademark in the United States. Again, Respondent may gain from sales in the United States based on the strength of Complainant’s trademark, but if Respondent’s Argentinean trademark rights are valid, such gains alone do not make Respondent’s offers or sales in Argentina illegitimate. Complainant may have a cause of action in the United States against Respondent for trademark infringement, but this is another matter.
Conclusion regarding Rights or Legitimate Interest
On the record of this case, the Panel determines that Respondent has rights or legitimate interest in the disputed domain name based on its registered trademark in Argentina and its offering for sale of products under that trademark (and the disputed domain name) in Argentina.
C. Registered and Used in Bad Faith
As the Panel has found that the Respondent has rights and legitimate interests in the disputed domain name, it is not strictly necessary to consider the third element of the Policy. However in view of the jurisdictional elements involved, the Panel notes the following:
The Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of bad faith (Policy, paragraph 4(b)). Among these circumstances are that the domain name has been registered or acquired by a respondent “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 [respondent’s] documented out-of-pocket costs directly related to the domain name” (Id., paragraph 4(b)(i)), and that a respondent “by using the domain name, … [has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 of a product or service on [its] web site or location” (id., paragraph 4(b)(iv)).
Although both Complainant and Respondent describe negotiations with respect to the potential purchase by Complainant of the disputed domain name, and Respondent initially provided e-mail correspondence regarding those negotiations, Complainant does not in its Complaint invoke those negotiations as evidence of bad faith on the part of Respondent. The Panel therefore will not pursue this potential ground of bad faith.
The United States
Respondent offers a course of computer instruction on a commercial web site at the Internet address identified by the disputed domain name. The Panel has found the disputed domain name to be confusingly similar to Complainant’s well-known trademark and service mark in the United States. The disputed domain name is also used as the principal identifier of Respondent’s business on its home page. The color schemes of Respondent’s and Complainant’s home pages are substantially similar. Both have blue and white backgrounds with yellow and black lettering. There is no disclaimer of affiliation with Complainant on Respondent’s home page.
Respondent has explained that the similarity between its web site and Complainant’s derives from the fact that Respondent (in connection with its On Line Soft venture) was negotiating with Complainant toward a joint business venture. While this may provide the basis for the original design, it would not explain why Respondent had not modified its web site two years following those negotiations.
The use by Respondent of the disputed domain name, which is confusingly similar to Complainant’s well-known trademark, in connection with a substantially similar web site design indicates that Respondent registered and used the disputed domain name to intentionally attract Internet users for commercial gain to its web site by creating confusion regarding Complainant as a source, sponsor or affiliate of Respondent’s web site.
Because Complainant has not demonstrated trademark rights in Argentina, and has not demonstrated that its product is well-known in Argentina, the Panel would not conclude that Respondent has acted in bad faith with respect to Internet users in Argentina. Respondent has not attempted to intentionally confuse Internet users in Argentina by suggesting an association with Complainant and its products.
Conclusion with regard to Bad Faith
Respondent has acted in bad faith with respect to Complainant’s trademark rights in the United States, but it has not acted in bad faith in respect to Argentina.
The Panel has determined that Respondent has rights or legitimate interests
in the disputed domain name. Complainant did not succeed in establishing the
second element of proof necessary under the Policy. The Panel need not determine
the legal consequences of its findings under third element.
For all the foregoing reasons, the Complaint is denied.
Frederick M. Abbott
Date: September 15, 2006
1 In light of the early filing of the Spanish-language Response, the Panel accepts the English-language translation filed with minor delay.
2 Luis Clemens, Marketers Tap Infomercials in Search of Immediate ROI, Marketing y Medios, June 1, 2005, ”www.marketingymedios.com”. The excerpt from this article provided by Complainant does not specify the precise geographic location where the advertising is directed. That is, it is not clear whether the advertising is directed solely to the US Hispanic market, or whether it is also directed to the Hispanic market in other countries.
3 Respondent has referred to this registration as a “fantasy name” and “nombre de fantasia”. However, the certificate of registration it provided in response to Administrative Order No. 1 indicates this was a fictitious business name registration.
4 For purposes of this proceeding, a determination regarding Complainant’s asserted date of first use prior to registration is not necessary.
5 The Panel makes determinations based on evidence submitted to it. The Panel does not suggest or determine that Complainant in another legal proceeding may not be able to prove that its mark is well known outside the United States, including in Argentina. The Panel only determines that Complainant has not demonstrated that here.
6 Complainant’s trademark application claimed data first use of November 2005. Complainant has not submitted any evidence in this proceeding of use of the COMPUTACION SIN BARRERAS mark in commerce.
7 Once again, the Panel is not making a determination that Complainant could not possibly establish common law trademark rights in these terms, but only that it is not done so here.
8 Apparently, at least as of 1998 (see USPTO reg. no. 2,205,186), the USPTO did not require disclaimer of exclusive use of a generic Spanish-language term. Note, however, that in 2006 the USPTO required disclaimer of “COMPUTACION” (see USPTO reg. no. 3,080,598).
9 See Florida Fictitious Name Act. Florida Statutes § 865.09. Such registration is required for individuals who conduct business under a name other than their own to establish a record of their true identity. This, inter alia, protects creditors and consumers.
10 Trademark registration in Puerto Rico may be undertaken prior to use of the mark in commerce. According to the web site of the Puerto Rico Department of State of the Secretary of State:
“їSe puede registrar una marca que no ha sido utilizada en el comercio? Sн. La Ley 63 Nъm del 14 de agosto de 1991, Ley de Marcas de Puerto Rico permite el solicitar la inscripciуn de una marca que no haya sido utilizada en el comercio. En estos casos el titular tendrб cinco (5) aсos desde su registro para comenzar el uso y enviar evidencia demostrativa de dicho uso al Registro.’
“Can a trademark be registered if it is not been used in commerce? Yes, Law no. 63 of 14 August 1991, Trademark Law of Puerto Rico, permits application for the registration of a mark that has not been utilized in commerce. In these cases the applicant has five years from its registration to begin using and to provide evidence of that use to the registrar.” (Translation by the Panel) http://estado.gobierno.pr/Marcas.htm.
However, Respondent's trademark application in Puerto Rico claims actual use in 2000.
11 See Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, CD-ROM Version, July 2006, at §22:11.
12 According to the documentary evidence submitted, Respondent took steps to register the COMPUTACION SIN BARRERAS trademark in Argentina before the November 2003 date of registration of the disputed domain name. According to Respondent’s pleading, the disputed domain name was registered in 1998, so that steps to register the trademark in Argentina were undertaken later than the registration.
13 The Panel in its Administrative Order No. 1, specifically requested from Respondent any evidence that it had sold products in Argentina under the COMPUTACION SIN BARRERAS trademark. Respondent did not provide any evidence of such sales.
14 See Martin A. Etcheverry, Argentine Trademark Law, Etcheverry & Etcheverry, “www.etcheverry.com/trademark.html”, excerpted from M. A. Etcheverry, Recent Developments of Industrial Property Rights in Argentina, 17 Cal. West’n Int’l L. J., 310 (1987).
15 It may be that Respondent is seeking some advantage in the United States based on confusing similarity between the disputed domain name and Complainant’s trademark registered in the United States. This alone does not make Respondent’s activities in Argentina illegitimate.
16 Although Respondent asserts that it did not receive actual notice of that action, because notice was sent to the address provided by Complainant to the USPTO, the Panel considers that Respondent had constructive notice of the dispute on that date. (Complainant sent a formal cease and desist demand to Respondent regarding the disputed domain name on September 27, 2005).