Èñòî÷íèê èíôîðìàöèè:
îôèöèàëüíûé ñàéò ÂÎÈÑ

Äëÿ óäîáñòâà íàâèãàöèè:
Ïåðåéòè â íà÷àëî êàòàëîãà
Äåëà ïî äîìåíàì îáùåãî ïîëüçîâàíèÿ
Äåëà ïî íàöèîíàëüíûì äîìåíàì

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Casa Editorial El Tiempo, S.A. v. Montanya Ltd

Case No. D2009-0103

1. The Parties

Complainant is Casa Editorial El Tiempo, S.A. of Bogotá, Colombia, represented by Fernando Triana, Bogotá, Colombia.

Respondent is Montanya Ltd. of Grand Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by María Bergsen, Barcelona, Spain.

2. The Domain Name and Registrar

The disputed domain name <clubdesuscriptoreseltiempo.com> is registered with Spot Domain LLC dba Domainsite.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 27, 2009. On January 28, 2009, the Center transmitted by email to Spot Domain LLC dba Domainsite.com a request for registrar verification in connection with the disputed domain name. On February 4, 2009, Spot Domain LLC dba Domainsite.com transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 6, 2009, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on February 10, 2009. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), 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").

Prior to the notification of Complaint and commencement of proceedings, the Respondent`s representative (as later confirmed) requested, on February 4, 2009, an electronic copy of the Complaint and its annexes. On February 5, 2009, the Center replied and, inter alia, informed the Parties that the Complaint was being verified for compliance with the formal requirements of paragraph 4(a) of the Rules and paragraph 5 of the Supplemental Rules, that once the formal requirements had been confirmed, the Complaint would be notified to Respondent accordingly. Before completion of the Center`s compliance review and Complainant`s submission of the Amended Complaint, Respondent`s representative reasserted its request for the Center to forward to it an electronic copy of the Complaint and annexes. Noting that a copy of the Complaint had apparently been forwarded by Complainant to the originally-named Respondent (the privacy service), the Center stated that it was not typical practice to provide informal copies of filed Complaints to Parties (or counsel) prior to formal commencement.

On February 6, 2009, Respondent`s representative replied stating that the privacy service had indicated it had not received a copy of the Complaint and in regards to the Center performing its compliance review, there was "no reason for WIPO having issued instructions to the registrar" to lock the domain name if the Complaint had not been properly filed. On February 9, 2009, the Center replied pointing to paragraph 8 of the Rules, which prevents a registrant from transferring its domain name during the pendency of a UDRP proceeding and further stating that neither the UDRP nor the Rules indicated that a provider is "under an obligation to forward to a Respondent and/or their authorized representative an unverified copy of a filed Complaint prior to formal notification of such Complaint".

On February 10, 2009, Respondent`s representative replied "Rule 8 (the basis for the registrar lock) uses the term ‘pending` it uses this term both in reference to the UDRP and later in the same paragraph to court actions. A court action cannot be ‘pending` unless the complaint has actually been filed. It is contrary to established legal principles to have 2 different meanings attach to the same term in the same paragraph. A UDRP cannot be pending unless it has actually been filed". On that same day, Complainant sent the Center and Respondent an electronic copy of the Amended Complaint (without annexes). Respondent`s representative subsequently requested an electronic copy of the annexes to the Amended Complaint.

The Center quite correctly informed Respondent that a matter may become pending as a result of a Complaint being filed with a provider, but still not have formally commenced in terms of notification of that dispute by the provider to the parties. The Center stated that it would of course forward Respondent a copy of the Complaint as verified by the Center on the formal commencement of proceedings, at which point the time period for the filing of a Response would commence.

The Panel finds that the Center`s obligation to provide a Respondent (or other their designated authorized representative) with a copy of the Complaint is fulfilled on formal notification of a Complaint in accordance with paragraphs 2(a) and 4(a) of the 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 February 11, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 3, 2009. On February 26, 2009, Complainant submitted a joint suspension request. On February 27, 2009, the Center notified both Parties of the proceeding suspension for a 30 day period. On March 10, 2009, Complainant requested to re-institute the proceeding. Then, on March 11, 2009, the Center re-instituted the proceeding and set the new due date for Response to March 17, 2009. The Response was filed with the Center on March 17, 2009. Accordingly, the Center notified the acknowledgement of the response on March 18, 2009.

The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on April 2, 2009. 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 April 2, 2009, Complainant submitted an unsolicited supplemental filing. The Center acknowledged receipt of the supplemental filing on April 2, 2009. On April 14, 2009, Respondent submitted an unsolicited supplemental filing. The Center acknowledged receipt of the supplemental filing on April 14, 2009.

Following paragraph 10 of the Rules, and in order to ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case, this Panel has accepted and analyzed both supplemental filings. See De Dietrich Process Systems v. Kemtron Ireland Ltd., WIPO Case No. D2003-0484 (citing, in turn, World Wrestling Federation Entertainment Inc (WWFE) .v. M. de Rooij, WIPO Case No. D2000-0290; National Australia Bank Limited v. Quality Systems Consulting QSC Pty Ltd, WIPO Case No. D2000-0765; Benzer v. FutureSoft Consulting Inc. and Sunil Bhatia, WIPO Case No. D2000-1648; Avon Products Inc. v. Jongsoo Lee, WIPO Case No. D2001-0272; Minnesota Mining and Manufacturing Company v. Mark Overbey, WIPO Case No. D2001-0727; Cosmos European Travels AG v. Eurotech Data Systems Hellos, Ltd., WIPO Case No. D2001-0941; Momo s.r.l. v. Andreoni, Inc, WIPO Case No. D2001-0961; The British Council v. Mr. Li Yen Chun, WIPO Case No. D2001-0997; Chantelle v. Marvin Anhalt, WIPO Case No. D2001-1181; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447; Trans Continental Records, Inc. v. Compana LLC, WIPO Case No. D2002-0105; The Leading Hotels of the World Ltd. v. Online Travel Group, WIPO Case No. D2002-0241, HER MAJESTY THE QUEEN, in right of her Government in New Zealand, as Trustee for the Citizens, Organizations and State of New Zealand, acting by and through the Honourable Jim Sutton, the Associate Minister of Foreign Affairs and Trade v. Virtual Countries, Inc, WIPO Case No. D2002-0754; SES Astra S.A. v. Design Technology Ltd. (t/a Transcom ISP), WIPO Case No. D2002-1078).

4. Factual Background

The Complainant is the holder, amongst others, of the following trademark registrations:

TRADEMARK	REG. No.	Class (Int`l)	DATE OF REGISTRATION	COUNTRY
CLUB DE SUSCRIPTORES DE EL TIEMPO	142348	16	December 7, 989	Colombia
CLUB DE SUSCRIPTORES DE EL TIEMPO	142347	35	December 7, 1989	Colombia
CLUB DE SUSCRIPTORES DE EL TIEMPO (& DESIGN)	190243	16	September 17, 1993	Colombia
CLUB DE SUSCRIPTORES DE EL TIEMPO (& DESIGN)	140663	35	July 29, 1993	Colombia

The disputed domain name <clubdesuscriptoreseltiempo.com> was registered on July 18, 2006.

5. Parties` Contentions

A. Complainant

The Complainant argues the following:

I. Identical or Confusingly Similar

- That previous panel decisions have held that trademark registrations are valid and constitute prima facie evidence of ownership, validity and the exclusive right to their use (and cites Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493).

- That Complainant has registered and constantly used its marks CLUB DE SUSCRIPTORES EL TIEMPO and CLUB DE SUSCRIPTORES DE EL TIEMPO since 1993.

- That the disputed domain name is identical to Complainant`s trademarks.

- That there is confusing similarity between its marks and the disputed domain name.

- That the disputed domain name incorporates the totality of the Complainant`s nominative portion of Complainant`s registered trademarks, i.e., "Club de Suscriptores el Tiempo".

- That the suffix ".com" has no distinctive function (Kudos Information Limited, Kudos Information, Inc. v. Kudos Systems, Keith Pearson, WIPO Case No. D2004-0015).

- That the likelihood of confusion between Complainant`s trademarks and the disputed domain name could induce Internet users into error as to the source, affiliation or endorsement of the domain name. (and cites Playboy Enterprises International, Inc v. Hector Rodriguez, WIPO Case No. D2000-1016).

II. Rights or Legitimate Interests

- That Complainant`s registered marks give Complainant an exclusive right to use its marks and to prevent third parties from doing so without its authorization.

- That Respondent lacks rights or legitimate interests in connection with the disputed domain name, as Respondent deliberately registered such domain name with the purpose of unlawfully diverting Internet users to its web site, and creating confusion among the public.

- That Complainant has not licensed or by any means authorized Respondent to use its trademarks for any purpose, nor the contents of its web page.

- That Respondent has no intellectual property rights with regard to CLUB DE SUSCRIPTORES EL TIEMPO.

- That Complainant is not aware that Respondent is or has been commonly known by the disputed domain name.

- That Complainant considers that there are no elements or facts to justify prior rights or legitimate interests in connection with the disputed domain name by the Respondent.

- That since Respondent is domiciled in an English speaking jurisdiction, a potentially bona fide offering of services and/or products in connection with the disputed domain name would appropriately have been presented in English and not in Spanish.

- That Respondent does not have any business that would legitimize the registration and use of the disputed domain name.

- That Respondent cannot prove that Respondent is well known in the newspaper business (and cites Compagnis Generale des Etablissements MIHELIN-MICHELIN & Cie v. Mr. Kristian Marjin van Wezel, WIPO Case No. D2001-0598).

- That by means of the disputed domain name Respondent currently offers a variety of services in competition with those legitimately offered by Complainant on its web site at "www.clubsuscriptores.eltiempo.com".

- That Respondent is facilitating the confusion among Internet users for profit.

III. Bad Faith Registration and Use.

- That Respondent has been reproducing the content of Complainant`s web page, offering similar products, services, bargains, and the like.

- That Respondent is not only diverting Internet users by using the disputed domain name, but is also illegitimately reproducing some textual aspects of Complainant`s web site.

- That the web site to which the disputed domain name resolves, contains some misspellings and grammatical mistakes that could cause considerable harm to the reputation of Complainant.

- That there is no demonstrable use by Respondent regarding a bona fide offering of goods or services (and cites Medisite, S.A.R.L. v. Intellisolve Limited, WIPO Case No. D2000-0179.)

- That Complainant believes that Respondent registered the disputed domain name in bad faith, with no rights to Complainant`s marks, with the purpose of attracting the clients of the Complainant to the disputed domain name, in an attempt to take advantage of Complainant`s trademark.

- That Respondent registered the disputed domain name after the registration and use of Complainant`s trademarks.

- That Respondent registered the disputed domain name with the intention of impeding Complainant to register said domain name and potentially attracting for commercial gain, Internet users to Respondent`s web site.

- That the high recognition of Complainant`s newspaper and the reproduction of Complainant`s content in Respondent`s site could lead one to conclude that Respondent knew of the existence of Complainant and of its industrial property rights, and that despite of it, Respondent decided to register the disputed domain name.

- That the registration and use of the disputed domain name could not be considered in good faith due to the fact that Respondent deliberately chose Complainant`s trademark and included it entirely in such domain name (and cites Marriot International, Inc. v. John Marriot, NAF Case No. FA-94737).

- That Respondent uses Complainant`s trademark as reproduced in the disputed domain name, but has not actively used a web site in connection to it.

- That there are previous decisions issued under the policy, in which Respondent has been named as a respondent:

Reed Elsevier Inc. and Reed Elsevier Properties Inc. v. Montanya Ltd., NAF Case No. 874482; Sanofi-Aventis v. Montanya Ltd., WIPO Case No. D2006-1079; Herbalife Int`l of Am. v. Montanya ltd, NAF Case No. FA 733012.

B. Respondent

The Respondent argues the following:

I. Identical or Confusingly Similar

- That Respondent reserves all rights as to whether or not the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights.

- That Complainant`s asserted rights are geographically limited to Colombia.

- That the disputed domain name combines generic search terms in a logical order.

- That Complainant`s trademark does not appear anywhere in Respondent`s web site.

- That the registered mark only gives Complainant limited protection i.e. for use in connection with the goods and services specified on the registration.

- That Complainant`s registered trademark does not give Complainant rights to the disputed domain name as mistakenly suggested by Complainant.

II. Rights or Legitimate Interests

- That Respondent`s first language is English and that the translation of the disputed domain name results in over 1.37 million references.

- That a Google search does not indicate that use of the phrase would be a trademark use.

- That the disputed domain name combines generic search terms in a logical order.

- That the disputed domain name has been consistently used as a search term to provide advertising and other information directly related to subject matter of the disputed domain name.

- That a visitor to the web site resolving to the disputed domain name is presented with categories of links contextually related to the word comprising the disputed domain name and the user must click on one of the presented categories; upon activating a topic link the user is directed to another site with links to goods and services offered by third parties who have paid others (not the Respondent) to appear under that category. (Grattan PLC v. Xedoc Holdings, S.A., WIPO Case No. D2007-0927; Admiral Insurance Services Limited v. Mr. Adam Dicker, WIPO Case No. D2005-0241 and GLB Servicos Interativos, S.A. v. Ultimate Search Inc, WIPO Case No. D2002-0189).

- That Complainant`s assertion that Respondent`s web page is a copy of Complainant`s web page is false as Complainant`s exhibits show that the disputed domain name is used as a generic search portal and there is no design or layout similar to Complainant`s asserted mark.

- That the presence of links in Spanish or the fact that the disputed domain name contains Spanish terms is not an indication of bad faith or lack of legitimate interest.

- That Complainant is referring to some classified offers made on Respondent`s and Complainant`s web pages and Complainant has no exclusive rights to offer or include advertising for airline tickets, competitions, weather or any other generic categories.

- That it is irrelevant that Respondent has never been known by the disputed domain name.

- That Respondent does not require authorization or license from Complainant in order to use the disputed domain name.

- That Respondent has never copied Complainant`s layout or otherwise intended to cause confusion among consumers.

- That Respondent is making a fair use of the disputed domain name without intent to misleadingly divert consumers.

- That no authorization or license from Complainant are needed (and cites Borges, S.A., Tanio, S.A.U. v. James English, WIPO Case No. D2007-0477).

- That the first person to register a generic domain name is considered to have legitimate interest over it (and cites, inter alia, Target Software Solution GmbH v. NetVirtue, Inc., WIPO Case No. DBIZ2002-0277).

III. Bad Faith Registration and Use.

- That the bad faith element of the Policy requires specific intent.

- That Respondent registered the disputed domain name in good faith.

- That until the Complaint, Respondent has never heard of the Complainant and was not aware of Complainant`s marks.

- That given the fact that Complainant`s trademarks were registered in Colombia, and that Respondent is domiciled outside Colombia, there can be no constructive notice.

- That a generic domain name is presumed to have been registered in good faith.

- That Respondent did not register the disputed domain name to sell it to Complainant or Complainant`s competitors.

- That Respondent first became aware of Complainant upon receipt of the present Complaint, and immediately thereafter Respondent offered to transfer the disputed domain name, without condition or charge.

- That Respondent did not register the domain name in dispute to preclude Complainant from reflecting its asserted marks in a domain name.

- That Respondent did not register the disputed domain name to attract users by creating a likelihood of confusion.

- That Respondent does not have a history of registering infringing domain names.

- That in Reed supra, the Respondent, when it became aware of possible trademark issues, immediately agreed to transfer the domain name and requested the panel to do so.

- That Sanofi-aventis supra, was a default case, and that therefore no inferences can be drawn from such case.

- That in Herbalife supra, again, Respondent agreed to transfer the domain name, and that the panel ordered a transfer without making findings against Respondent.

- That the Policy requires that the Complainant proves that the disputed domain name is confusingly similar to a trademark in which Complainant has rights.

- That Complainant`s mark is constrained to the figurative mark as currently registered.

- That trademarks are limited by jurisdiction and subject to the scope of goods/services for which the mark is registered.

- That there is no requirement that a domain name registrant need to have an intellectual property right in such domain name.

- That Respondent`s offer to settle the matter by voluntary transfer of the disputed domain name is not evidence of illegitimacy.

- That using a domain name for click-through revenues is not unlawful or by itself a bad faith activity.

6. Discussion and Findings

In accordance with the Policy, paragraph 4(a), Complainant must prove that:

(i) The domain name in question is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

In the administrative proceeding, Complainant must prove that each three of these elements are present.

A. Identical or Confusingly Similar

The disputed domain name <clubdesuscriptoreseltiempo.com> is confusingly similar to Complainant`s word trademark CLUB DE SUSCRIPTORES DE EL TIEMPO. The only difference is the elimination of the preposition "DE" in the domain name which means "of" in Spanish. The absence of the spaces between the words is irrelevant, and required by the Domain Name System (DNS).

The addition of the gTLD ".com" has no distinctive capacity and no legal significance in this case. (See Telecom Personal v. namezero.com, WIPO Case No. D2001-0015; Nokia Corporation v. Private Case, WIPO Case No. D2000-1271; See Ahmanson Land Company v. Vince Curtis, WIPO Case No. D2000-0859; Monty and Pat Roberts, Inc. v. J. Bartell, WIPO Case No. D2000-0300; J.P. Morgan & Co., Incorporated and Morgan Guaranty Trust Company of New York v. Resource Marketing, WIPO Case No. D2000-0035; Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409).

The disputed domain name is also confusingly similar to the marks CLUB DE SUSCRIPTORES EL TIEMPO (& Design). The word element of the trademark is entirely incorporated in the disputed domain name. The absence of spaces between the words, and the incorporation of the gTLD ".com" are irrelevant (see supra).

With respect to Complainant`s trademarks that incorporate a design, said design is irrelevant in the context of domain names, and thus the disputed domain names are confusingly similar to said trademarks. EFG Bank European Financial Group SA v. Jacob Foundation, WIPO Case No. D2000-0036, ("Only the graphic elements of such trademark [sic] which anyway cannot be reproduced in a domain name, were left out.").

This Panel agrees with previous panels which have decided that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. (See Todito.com v. Francisco Gómez Ceballos, WIPO Case No. D2002-0717; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615; Compagnie Générale des Etablissement MICHELIN v. Lost in Space, SA, WIPO Case No. D2002-0504; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; Toyota France and Toyota Motor Corporation v. Computer-Brain, WIPO Case No. D2002-0002; and Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd, WIPO Case No. D2000-0802).

Respondent has discussed a series of issues regarding territoriality and scope of trademark registrations. The Policy only requires that the Complainant submit evidence showing the existence of trademark rights, and that the disputed domain name is identical or confusingly similar to Complainant`s trademarks.

The first requirement of the Policy has been met.

B. Rights or Legitimate Interests

The following are examples of circumstances where a respondent may have rights or legitimate interests in a disputed domain name:

"(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)).

Respondent has explained that it has not been commonly known as <clubdesuscriptoreseltiempo.com>.

It is clear that Respondent has not reproduced Complainant`s web site, as Complainant had pointed out.

Nevertheless, Respondent`s conduct cannot be considered a bona fide offering of goods or services. Even if Respondent argues that the disputed domain name combines generic search terms in a logical search order, Respondent`s choice is not likely to be a coincidence. It entirely matches Complainant`s trademark CLUB DE SUSCRIPTORES EL TIEMPO (except for the design element, which cannot be incorporated into a domain name). Respondent did not choose a domain name like <elephant.com>, which is clearly generic (see Admiral Insurance Services Limited v. Mr. Adam Dicker, WIPO Case No. D2005-0241, cited by Respondent). The domain name that it chose is not a typical, generic term. It reproduces in its entirety a registered trademark. Respondent seems to have registered domain names that incorporate third parties` trademarks (Sanofi-aventis supra, Herbalife supra), or that constitute typosquatting (Reed supra). In the Panel`s view, this establishes a pattern of conduct as contemplated by the Policy.

In Reed supra and Sanofi-Aventis supra, the panels ruled against Respondent, having found lack of rights or legitimate interests and bad faith registration and use. In Herbalife supra the panel chose to transfer the domain name without analyzing the requirements of the Policy, because both Parties agreed on the transfer, after the proceeding had commenced.

Respondent recognizes that Respondent`s site linked to the disputed domain name is partly in Spanish. This further supports that Respondent is targeting Internet users aware of the Complainant and Complainant`s trademark.

In light of the above, the use that Respondent made of the disputed domain name, prior to having been notified of this Complaint, cannot have been made in good faith, because it was based on the use of a registered trademark, like in the other cases, which generates a risk of confusion to users and constitutes a problem for Complainant to have access to its consumers on line, and which leads to diversion of traffic for profit (especially taking into account Respondent`s pattern of conduct).

This use cannot be a legitimate, noncommercial or fair use of the domain name either, because it generates the risk of confusion and diversion of consumers. (See e.g.: Lyonnaise de Banque v. Richard J., WIPO Case No. D2006-0142, Motorola, Inc. v. Mr. Josip Broz, WIPO Case No. D2002-1063).

The second requirement of the Policy has been met.

C. Registered and Used in Bad Faith

According to paragraph 4(b) of the Policy, the following circumstances shall be evidence of registration and use in bad faith:

"(i) circumstances indicating that you have registered or you have acquired the domain name 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant`s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."

Paragraph 4(b)(ii) sets forth a strict burden that must be met by complainants: proving that respondents have engaged in a pattern of preventing the trademark holder from reflecting the mark in a domain name. In this case, Complainant has fulfilled this requirement. It appears to the Panel that Respondent has previously registered three domain names that incorporate or mimic (in a typosquatting fashion) trademarks held by third parties. Respondent argues that these cases are not relevant. However, they show that Respondent has a history of registering domain names that conflict with registered trademarks, in accordance to the Policy. This pattern of conduct has been repeated in the present case.

Moreover, the evidence on the record shows that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent`s web site or other on-line location, by creating a likelihood of confusion with Complainant`s mark as to the source, sponsorship, affiliation, or endorsement of Respondent`s web site or location. Respondent`s pattern of registering third parties` marks as domain names, and the fact that Respondent`s site is in part a Spanish site, and in which certain services are offered, which are similar and could lead to confusion, especially considering that the disputed domain name creates a risk of confusion among users of Complainant`s services, or those looking for Complainant`s web site further evinces bad faith registration and use (see Hewlett-Packard Company v. NA, NAF Case No. FA154141; Savin Corporation v. Cal Toner c/o Domain Manager, NAF Case No. 230934; State Fair of Texas v. Granbury.com, NAF Case No. FA95288).

The third requirement of the Policy has been met.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <clubdesuscriptoreseltiempo.com> be transferred to Complainant

---

Kiyoshi I. Tsuru
Sole Panelist

Dated: April 20, 2009