WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Grupo Televisa, S.A., de C.V et al. v. Autosya S.A. de C.V., et al.
Case No. DTV2001-0007
1. The Parties
Complainants are GRUPO TELEVISA, S.A., DE C.V. and its wholly-owned subsidiaries COMERCIO MAS, S.A. DE C.V.; TELEVISA, S.A. DE C.V. d/b/a TELEVISA and TELEFILMES, S.A. DE C.V. ("Complainant" and "TELEVISA") an international group of companies headed by GRUPO TELEVISA, S.A. DE C.V., Avenida Vasco de Quiroga 2000, Edificio "A", Piso 4, Col. Zedec Santa Fe, Mexico, D.F. 01210, and contains various wholly-owned subsidiaries including co-complainants COMERCIO MAS, S.A. DE C.V., Mier y Pesado 210, Piso 2, Colonia del Valle, Mexico, D.F. 03100, TELEVISA, S.A. DE C.V. d/b/a TELEVISA, Chapultepec No. 28, Mexico, DF 06724, TELEVISA, S.A. DE C.V., Avenida Chapultepec No. 28, Colonia Doctores, C.P. Mexico, D.F. 06724 and TELEFILMES, S.A. DE C.V., Vasco de Quiroga 2000, Col. Zedec Santa Fe, Mexico, D.F. 01210 Telephone: (525) 261-2510; Fax: (525) 261-2546.
Respondents are Autosya SA de CV and Enrique de la Campa ("Respondents"), whose address, as provided by the Registrar, is at Plaza Popocateptl No. 41 Depto. 2, Colonia Condesa, Mexico City, Mexico 06140.
2. The Domain Name and Registrar
The domain name at issue is <esmas.tv> (the "Domain Name") which domain name is registered with dotTV Corporation International ("dotTV"), in Los Angeles, California, United States of America. dotTV has voluntarily adopted the Uniform Domain Name Dispute Resolution Policy (the "Policy" or the "UDRP") and has selected the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") as a dispute resolution service provider.
3. Procedural History
3.1 A Complaint was submitted electronically to the WIPO Center on May 15, 2001, and the signed was received on March 20, 2001. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated March 21, 2001.
3.2 On March 26, 2001, dotTV confirmed by e-mail that the domain name at issue is registered with dotTV, is currently in active status, and that the Respondents are the current registrant of the name. The registrar also forwarded the requested Whois details, and confirmed that a copy of the Complaint had been sent to it by the Complainants and that the Policy is in effect.
3.3 The WIPO Center determined that the Complaints satisfy the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Sole Panelist has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"), the Uniform Rules, and the Supplemental Rules.
3.4 On March 27, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondents (with copies to the Complainants and dotTV), setting a deadline of April 14, 2001, by which the Respondents could file a Response to the Complaints. The Commencement Notification was transmitted to the Respondents by courier and by e-mail to the e-mail addresses indicated in the Complaint. In any event, evidence of proper notice is provided by the evidence in the record of the Respondentsí participation in these proceedings.
3.5 On April 23, 2001 the Center advised Respondents that it was in default for failing to file its Response. No Response has been received.
3.6 On May 29, 2001, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Mr. Sergio Rodríguez Castillo (the "Sole Panelist"), the Center notified the parties of the appointment of a single-member panel consisting of the Sole Panelist.
4. Factual Background
Given the absence of a Response, the following facts are undisputed:
4.1 Complainants are a group of companies which compose an international media and entertainment conglomerate incorporated in Mexico since 1972 and which is the dominant media company in Mexico. Complainantsí ESMAS Internet portal is well known throughout Mexico and the Spanish-speaking world and receives thousands of visitors each day. Complainant has relied heavily in its strong position in the television industry in Mexico and the Spanish speaking market in order to promote its ESMAS Internet portal. Complaint, Annex D and H.
4.2 Complainants owns Mexican trademarks for the ESMAS mark and design (Complaint, Annex E), including:
(i) Mexican Service Mark Registration No. 641257 for the service mark ESMAS, registered with the Instituto Mexicano de La Propiedad Industrial as of December 17, 1999, and covering services identified as "restoration (nourishment services), temporary accommodation; medical care, hygiene and beauty, veterinary and agricultural services; law services; scientific and industrial investigation; computer programming" in International Class 42
(ii) Mexican Service Mark Registration No. 641277 for the service mark ESMAS, registered with the Instituto Mexicano de La Propiedad Industrial as of December 17, 1999, and covering services identified as "telecommunications" in International Class 38.
(iii) Mexican Service Mark Registration No. 641279 for the service mark ESMAS and Design, registered with the Instituto Mexicano de La Propiedad Industrial as of January 24, 2000, and covering services identified as "rental services for access time to a computer for the manipulation of data; access time rental to informatics (information) data bases, analysis for the implementation of computer systems; meeting clubs; professional consulting not related to business management; mail interchange services, photographic reportageís; horoscope elaboration, fashion information, information about missing persons, retail sales offices; civil protection services; data bases reconstruction; news crew (news reporting) services; software updates" in International Class 42.
(iv) Mexican Service Mark Registration No. 641280 for the service mark ESMAS and Design, registered with the Instituto Mexicano de La Propiedad Industrial as of January 24, 2000, and covering services identified as "communication services rendered through systems pages or sites or global communication net sites such as the Internet, electronic communication services and all other kind of telecommunication services rendered through or related with Internet sites, including computer terminals communication and messages transmission and/or computer help images" in International Class 38.
(v) Mexican Service Mark Registration No. 641258 for the service mark ESMAS.COM, registered with the Instituto Mexicano de La Propiedad Industrial as of December 17, 1999, and covering services identified as "telecommunications" in International Class 38
(vi) Mexican Service Mark Registration No. 641259 for the service mark ESMAS.COM, registered with the Instituto Mexicano de La Propiedad Industrial as of December 17, 1999, and covering services identified as "restoration (nourishment services), temporary accommodation; medical care, hygiene and beauty, veterinary and agricultural services; law services; scientific and industrial investigation; computer programming" in International Class 42.
4.3 These marks will be referred hereinafter as the "ESMAS Marks".
4.4 Complainants have also registered the domain names <esmas.com> and <esmas.net> with Network Solutions, Inc. on February 14, 2000, and <esmas.org> on February 25, 2000, Complaint, Annex G.
4.5 The launch of Complainantsí ESMAS Internet portal was announced with significant media attention on April 16, 2000. Since its launch, Complainants have expended substantial sums of money on the advertising and promotion of the ESMAS portal in both the Mexican and United States markets and have begun to do so worldwide. Complaint Annex H.
4.6 The phrase "ESMAS" means "IT IS MORE" in Spanish. The phrase is not descriptive of a specific service or product.
4.7. Respondents registered the domain name at issue on May 16, 2000. Complaint, Annex A.
4.8 On October 27, 2000, using the contact information Respondents had provided to the registrar, Complainantsí counsel sent a Cease and Desist letter requesting the transfer of the <esmas.tv> domain name. Complainants states that such letter was returned with a note indicating that neither AUTOSYA S.A. de C.V. nor Enrique de la Campa were located at the address. Complainants further states that it informed the Registrar of the inaccurate contact information and that Registrar contacted Mr. de la Campa by e-mail, and provided a new address, located in Mexico, not in the United States as was stated in the original registration. Although Complainants do not provide evidence of the initial communications between Registrar and Respondents, they include an electronic message printout by which Mr. Enrique de la Campa provides the new address in Mexico. Complaint, Annex C.
4.9 In such electronic message sent to Registrar and Complainantsí counsel, dated November 28, 2000, Respondents stated that he was "selling the rights" over the Domain Name.
4.10 On November 30, 2000, the Complainantsí counsel sent Respondents via e-mail the appropriate materials to transfer the domain name to Complainants and offered to pay the transfer costs.
4.11 On that same date, Mr. De la Campa answered via e-mail, asking why did he have to transfer the Domain Name to Complainants. Complainantsí counsel then sent to Respondents the same Cease and Desist letter that it had tried to send before.
4.12 Complainantsí counsel again attempted to discuss the transfer of the domain name with Respondents in an e-mail dated January 12, 2001, which Respondents did not answer.
4.13 On February 2, 2001, Complainants discovered Respondents were offering the Domain Name for sale for $29,000.00 on the Great Domains web site.
4.14 The authenticity of all these electronic communications (Complaint, Annex C) have not been disputed by Respondents.
5. Partiesí Contentions
5.1 Complainants contend that they have several registrations of the ESMAS Marks. Complainants further contend that the Domain Name is identical with and confusingly similar to the ESMAS Marks pursuant to the Policy paragraph 4(a)(i).
5.2 Complainants contend that Respondents have no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).
5.3 Complainants contend that Respondents registered and is using the Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii).
5.4 Respondents failed to contest Complainantsí assertion that they have registered the ESMAS Marks or that the Domain Name is identical with and confusingly similar to the ESMAS Marks.
5.5 Respondents failed to contest Complainantsí assertion that Respondents have no rights or legitimate interest in the Domain Name.
5.6 Respondents failed to contest Complainantsí assertion that Respondents registered and used the Domain Name in bad faith.
6. Discussion and Findings
6.1 The Sole Panelist considers that the Respondents by registering the Domain Name with dotTV, agreed to be bound by all terms and conditions of its Service Agreement, and any pertinent rule or policy, and particularly agreed to be bound by the Policy (incorporated and made a part of the Service Agreement by reference), which requests that proceedings be conducted according to the Rules and the Supplemental Rules. Therefore, the dispute subject matter of this proceeding is within the scope of the above mentioned agreements and Policy, and this Sole Panelist has jurisdiction to decide this dispute.
6.2 Furthermore, the Sole Panelist considers that in the same manner by entering into the above mentioned Service Agreement, the Respondents agreed and warranted that neither the registration of its domain name nor the manner in which it may intend to use such domain name will directly or indirectly infringe the legal rights of a third party, and that in order to resolve a dispute under the Policy, Respondentís domain name registration services may be suspended, cancelled or transferred.
6.3 The Sole Panelist also particularly considers that it is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that Respondents have being given adequate notice of proceedings initiated against them; that the parties may have a fair and reasonable opportunity to respond, exercise their rights and to present their respective cases; that the parties be notified of the appointment of this Sole Panelist; and, that both parties be treated with equality in these administrative proceedings.
6.4 In the case subject matter of this proceeding, the Sole Panelist is satisfied that these proceedings have been carried out by complying with such elemental due diligence requirements, and particularly contemplating the notification of the filing of the Complaint and the initiation of these proceedings giving the Respondents a right to respond.
6.5 Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable."
6.6 Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(1) that the domain name registered by the Respondents is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
(2) that the Respondents have no legitimate interests in respect of the domain name; and,
(3) that the domain name has been registered and used in bad faith.
6.7 Even though Respondents have failed to file a Response or to contest Complainantsí assertions, the Sole Panelist will review the evidence proffered by Complainants to verify that the essential elements of the claims are met.
6.8 Identity or Confusing Similarity
6.8.1 Complainants contend that they have several registrations of the ESMAS Marks. Complainants further contend that the Domain Name is identical with and confusingly similar to the ESMAS Marks pursuant to the Policy paragraph 4(a)(i) and that Respondents have misappropriated the term ESMAS, in its entirety, as the dominant portion of the Domain Name.
6.8.2 Respondents have not contested the assertions by Complainants that they have valid registrations of the ESMAS Marks. Therefore, the Sole Panelist finds for purposes of this proceeding that Complainants have enforceable rights in the ESMAS Marks.
6.8.3 Further, Respondents do not dispute that Domain Name is identical or confusingly similar to the ESMAS Marks in which the Complainant has rights.
6.8.4 The Sole Panelist notes that the entirety of the word group "ES MAS" is included in the Domain Names.
6.8.5 In addition, the Sole Panelists notes that the fact that the domain name in question is a ccTLD of the kind identified with the ".tv" extension, which can be easily relate with the acronym for "television" and telecommunication services; services covered by the ESMAS Marks and with which the Complainants are widely recognized in Mexico and other Spanish speaking countries, are additional element that may cause confusion and are misleading. The Domain Name suggests an association or relationship to the Complainant, which does not exist and, if used by parties other than Complainants, will cause confusion in the marketplace.
6.8.6 Therefore, the Sole Panelist finds that the Domain Name is confusingly similar to the ESMAS Marks pursuant to the Policy paragraph 4(a)(i).
6.9 Rights or Legitimate Interest.
6.9.1 Complainants contend that Respondents have no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii).
6.9.2 Complainant have not licensed or otherwise permitted Respondents to use any of the ESMAS Marks, nor have Complainants licensed or otherwise permitted Respondents to apply for or use any domain name incorporating any of their marks. Furthermore, Respondents have not, nor have intended to establish a relationship with Complainant for the use of the ESMAS Marks.
6.9.3 The Policy paragraph 4(c) allows three nonexclusive methods for the Sole Panelist to conclude that Respondents have rights or a legitimate interest in the Domain Names:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.
6.9.4 The file contains no evidence that the Domain Name had been used, in any manner or form (including noncommercial or fair use), by Respondents before the initiation of the dispute, nor that Respondents were preparing to use it.
6.9.5 Respondents have not produced any evidence that it has been commonly known by the Domain Name nor that they had attempted to registered it as a trademark in Mexico or abroad.
6.9.6 Based on the foregoing, the Sole Panelist finds that Respondents have no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).
6.10 Bad Faith
6.10.1 Complainants contend that Respondents registered and are using the Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii).
6.10.2 The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainants to show bad faith registration and use of domain names:
(i) circumstances indicating that you [Respondent] 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 [Respondent] 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 [Respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product.
6.10.3 Complainants set forth facts which they assert show the bad faith of Respondent.
6.10.4 Respondents registered the Domain Name one month after Complainantsí ESMAS Internet Portal was launched with great media coverage in Mexico, where Respondents reside. The fact that the Respondent is a resident of Mexico and Mexico City, the country and city in which Complainants have their principal place of business and the target of substantial resources for the promotion of the ESMAS Internet Portal, indicates that there was a high likelihood that Respondents were aware of Complainantsí association with and financial interest in the phrase "ESMAS".
6.10.5 Complainants contends that Respondents are neither known by, nor have Respondents engaged in commerce, under the ESMAS name. Respondents have not contested these assertions nor have produce any evidence that they have any such interest.
6.10.6 In addition and as stated above, the fact that the domain name in question is a ccTLD of the kind identified with the ".tv" extension, which can be easily related with the type of services offered by the Complainant in Mexico (namely television and media services) further evidences that the Respondents registered the Domain Name in order to prevent the Complainants from registering it, primarily for the purpose of selling it for valuable consideration.
6.10.7 Additionally, Respondentsí bad faith registration may also be ascertained by the fact that Respondents supplied incorrect contact information when registering the Domain Name. This Sole Panelist notes that such misleading information was not expontaneously amended by Respondents but only when contacted by the Registrant. Respondent did not provide any explanation to the Registrar, nor during these proceeding of the reasons for the changing of the contact information. Although it is clear that supplying incorrect information cannot be considered by itself as an act of bad faith; when considered jointly with other elements, it can be interpreted as evidence of such bad faith.
6.10.8 The Sole Panelist notes that Respondent, by itself, declared in its electronic message dated November 28, 2000 to Registrar and Complainantís counsel that he intended to sell the rights on the Domain Name.
6.10.9 The fact that Respondents put on sale the Domain Name on the Great Domains web site for a sum of $29,000.00, an amount highly exceeding the actual costs directly related to the Domain Name registration; and notwithstanding the fact that they had been informed by Complainantsí counsel that the Domain Name infringed the ESMAS Marks, and its proposal to cover the Respondentsí costs for the transfer and to reimburse the expenses associated with the Domain Name registration, provides further evidence of Respondentsí bad faith behavior.
6.10.10 The Sole Panelist finds that these facts and Complainantsí allegations show the necessary elements of bad faith under the Policy paragraph 4(b)(i). Therefore, the Sole Panelist finds that the Domain Name was registered and used in bad faith pursuant to the Policy paragraph 4(a)(iii).
Therefore, and in consideration to the Complaintsí compliance with the formal requirements for this domain name dispute proceeding, to the factual evidence and legal contentions that were submitted, to the conclusive confirmation of the presence of each of the elements contemplated in Paragraph 4 (a) (i), (ii), and (iii) of the Policy, and on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and the Supplemental Rules and principles of law, as directed by paragraphs 14 (a) and (b) and 15 (a) of the Rules, this Sole Panelist decides:
(1) that the Domain Name registered by Respondents is confusingly similar to Complainantsí ESMAS Marks;
(2) that Respondents have no rights or legitimate interests in respect of the Domain Name; and
(3) that the Domain Name has been registered and is being used in bad faith by the Respondents.
Therefore, the Sole Panelist requires, pursuant to what is provided for under Paragraphs 3 (c) and 4 (i) of the Policy, that the domain name <esmas.tv> be transferred to either GRUPO TELEVISA, S.A. DE C.V., COMERCIO MAS, S.A. DE C.V., TELEVISA, S.A. DE C.V. or TELEFILMES, S.A. DE C.V., at their option.
Dated: June 11, 2001