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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Editorial Perfil S.A. v. Portfolio Brains, LLC

Case No. D2009-0486

1. The Parties

The Complainant is Editorial Perfil S.A. of Buenos Aires, Argentina, represented by Adriano Patricio Diaz Cisneros, Argentina.

The Respondent is Portfolio Brains, LLC of Los Angeles, California, United States of America, represented by Willenken Wilson Loh & Lieb, LLP, United States of America.

2. The Domain Name and Registrar

The disputed domain name <editorialperfil.com> is registered with NameKing.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 15, 2009. On April 15, 2009, the Center transmitted by email to NameKing.com a request for registrar verification in connection with the disputed domain name. On April 17, 2009, NameKing.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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").

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 April 24, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 14, 2009. The Response was filed with the Center on May 14, 2009.

The Center appointed Jonathan Agmon as the sole panelist in this matter on May 26, 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.

4. Factual Background

The Complainant is an Argentinean company that handles manufacturing, publishing and printing of periodicals in Spanish under the name "Editorial Perfil".

The Complainant is the owner of numerous Argentinean trademark registrations for the mark EDITORIAL PERFIL. For example, the Complainant is the owner of Argentinean trademark registration No. 1665461 EDITORIAL PERFIL with the registration date of May 11, 1977; Argentinean trademark registration No. 1736957 EDITORIAL PERFIL with the registration date of April 6, 1979; Argentinean trademark registration No. 1965648 EDITORIAL PERFIL with the registration date of October 10, 1993 and many more.

The Complainant also owns trademark registrations for the mark EDITORIAL PERFIL in other countries around the world. For example, the Complainant owns Uruguayan trademark registration No. 250457 EDITORIAL PERFIL with the registration date of November 26, 2001.

The Complainant has been using its EDITORIAL PERFIL trademarks consistently over the years to promote and market printing and publishing products.

The Complainant is the owner of a domain name that includes part of the wording "Editorial Perfil" <perfil.com>.

The Respondent registered the disputed domain name <editorialperfil.com> on May 3, 2004. The disputed domain name is no longer active and is now a parked web page that directs people to a Google search page, which notifies of a broken link – see "www.editorialperfil.com".

5. Parties` Contentions

A. Complainant

The Complainant argues that the disputed domain name is identical to the trademarks owned by the Complainant, seeing that the additional generic top level domain ".com" is inconsequential.

The Complainant further argues it has exclusive rights in the EDITORIAL PERFIL marks and that these marks are widely recognized with the Complainant and the Complainant`s operation. Furthermore, the Complainant argues that it has not authorized the Respondent to use or otherwise dispose of the EDITORIAL PERFIL mark and is not affiliated with the Respondent in any way.

The Complainant further argues that the Respondent had to have been aware to its well-known mark when registering the disputed domain name, as it operates within the same market as the Complainant. The Complainant argues that the registration of the disputed domain name under these conditions constitutes bad faith.

The Complainant further argues that the Respondent`s website, which operated under the disputed domain name, contained numerous sponsored links, including links to pages that are sponsored by the Complainant`s competitors. The Complainant argues that this also constitutes bad faith.

In addition, the Complainant argues that the Respondent`s website contains links to Complainant`s official trademarks such as "Revista Noticias", "Hombre", "Revista Caras", "Look", and thus created the impression that the Respondent is affiliated with the Complainant. The Complainant argues that this also constitutes bad faith.

For all of the above reasons, the Complainant requests transfer of the disputed domain name.

B. Respondent

The Respondent contends that it lacked bad faith in the registration of the disputed domain name because it was not aware of the Complainant. Once it became aware of the Complaint, the Respondent asserts that it contacted the Complainant to offer a voluntarily transfer of the disputed domain name, but the proposal was not accepted.

The Respondent does not admit fault or liability, or respond substantively to the Complaint. Given the Respondent "is willing to voluntarily transfer the Domain Name(s) to the Complainant", the Respondent requests that transfer be ordered without findings of fact or conclusions as to whether the requirements of paragraph 4(a) of the Policy are met.

6. Discussion and Findings

In the absence of the Respondent`s consent to the relief requested by the Complainant, Paragraph 4(a)(i) of the Policy requires the complainant to prove each of the following elements in order to prevail:

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

(ii) the 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.

However, where the respondent agrees to transfer the disputed domain name to the Complainant there may be no need to review the facts supporting the claim. (Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207).

Furthermore, under paragraph 10 of the Rules, which addresses the "General Powers of the Panel," a panel is authorized to "conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules" provided that "[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case." Under paragraph 15 of the Rules, a panel "shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." It is also instructive that under paragraph 17 of the Rules if parties agree on a settlement before the Panel`s decision is issued, the Panel shall terminate the proceeding. "Where the Complainant has sought transfer of a disputed domain name, and the Respondent consents to transfer, then pursuant to paragraph 10 of the Rules the Panel can proceed immediately to make an order to transfer. This is clearly the most expeditious course." (Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207).

UDRP Panels have ruled in the past that "due expedition" means that "a Panel should not diffuse its energy on matters which do not require a decision." (Google Inc. v. Herit Shah, WIPO Case No. D2009-0405).

Nevertheless in this Panel`s view, it should be emphasized that consent-to-transfer requests should not mask the activities of serial cyber squatters and the Panel will not concur with such requests. However, the Complainant did not allege that the Respondent is such a serial cyber squatter or that it has habitually abused third party trademark rights in the past. Therefore, the Panel asserts that in this case, the consent-to-transfer request obviates the need to assess the matter under the elements of the Policy. (See also Google Inc. v. Herit Shah, WIPO Case No. D2009-0405).

It is therefore the finding of this Panel that the Respondent`s consent to transfer the disputed domain name to the Complainant provides a sufficient basis for an order to transfer and for concluding the proceeding without deciding at this time whether the requirements of paragraph 4(a) of the Policyare met.

7. Decision

For all the foregoing reasons the Panel orders that the domain name <editorialperfil.com> be transferred to the Complainant.


Jonathan Agmon
Sole Panelist

Dated: June 5, 2009

 

Источник информации: https://internet-law.ru/intlaw/udrp/2009/d2009-0486.html

 

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