Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

Complainant is Universal City Studios, Inc. ("Complainant"), a corporation organized and existing under the laws of the State of Delaware, with its principal place of business at 100 Universal City Plaza, Universal City, California, USA.

Respondent is Antonio Paez ("Respondent") located in Boca Raton, Florida, USA.

The domain names at issue are "calle13.com" and "calle13.net" (the "Domain Names"). The registrar is Register.com., whose address is 575 Eighth Avenue, 11^th Floor, New York, NY, USA.

The WIPO Arbitration and Mediation Center (the "Center") received the Complaint of Complainant via email on June 7, 2000. The Center received hard copies of the Complaint on June 13, 2000. The Complainant paid the required fee.

On June 10, 2000, the Center sent to the Registrar a request for verification of registration data.

On June 10, 2000, the Center sent an Acknowledgment of Receipt of Complaint to Complainant.

On June 14, 2000, the Registrar confirmed, inter alia, that it is the registrar of the Domain Names and that the Domain Names are registered in the Respondent's name.

On June 16, 2000, the Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

On June 16, 2000, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.

On July 14, 2000, the Center sent notice of Respondent’s default in filing a Response.

The Center received a series of correspondence from both Complainant and Respondent from July 24 to August 3, 2000.

On August 3, 2000, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page, Esq. (the "Sole Panelist"), the Center notified the parties of the appointment of a single-arbitrator panel consisting of the Sole Panelist.

On August 14, 2000, Respondent filed its late Response which the Sole Panelist has chosen to consider.

Complainant’s complaint is based on its use and registration of the trademark and service mark CALLE 13. Complainant has used the CALLE 13 mark in connection with television production and distribution services as well as related merchandise such as clothing and promotional items.

Complainant, through its indirect subsidiary Universal Studios Network Limited and its licensee, the Latin America and Brazil operating division of USA Networks, a New York general partnership, distributes and promotes Complainant’s television programming outside of the United States. Among other channels, Complainant promotes a channel that specializes in action and suspense programming. The channel was introduced in France in 1997 as "13éme Rue: La Chaine Action et Suspense," in Germany in August 1998 under the name "13^th Street: The Action & Suspense Channel" and in Spain in June 1999 as "Calle 13: El Canal de Acción Y Suspenso." The "CALLE 13" channel was launched in Spain with approximately 700,000 subscribers and was widely publicized. The "CALLE 13" channel has since been introduced throughout Latin America.

Complainant has registered the CALLE 13 marks in eleven countries, including Colombia, Costa Rica, the Dominican Republic, Guatemala, Honduras, Mexico, Nicaragua, Paraguay, Peru, Spain and Uruguay. In addition, Complainant owns pending applications for the mark in Colombia, Guatemala, Nicaragua, Spain and ten additional countries, including Argentina, Belize, Bolivia, Brazil, Chile, Ecuador, El Salvador, Panama, Suriname and Venezuela. All of Complainant’s applications to register the CALLE 13 marks were filed before Respondent registered the Domain Names, with the first being filed in February 1999.

The Domain Names were registered with the Registrar for a term of two years on or about August 5, 1999.

Respondent asserts that he conducted trademark searches with the United States Patent and Trademark Office on or about March 30, 2000. The results of several searches were that no registrations existed for CALLE 13. When Respondent discovered that CALLE 13 was not registered in the United States, he applied to register the trademark with the United States Patent and Trademark Office. Respondent alleges that the United States Patent and Trademark Office has assigned Registration No. 76015615 to his application. This trademark application is pending final approval.

Respondent alleges that he immediately began to develop a website using the Domain Names. The Domain Names currently resolve to websites that consist solely of "Under Construction" pages provided by the Registrar.

Complainant alleges that Respondent registered the domain names at issue two months after the introduction of the "CALLE 13" channel in Spain. Shortly after the domain names were registered, the Respondent contacted representatives of the Complainant and offered to sell the Domain Names for US$100,000. Again on February 28, 2000, the Respondent contacted the Complainant and stated that his request for US$100,000 was modest when compared to a valuation for the domain names he obtained from an auction website for domain names, namely, www.greatdomains.com.

Respondent admits that he has offered to sell the Domain Names to Complainant for US$100,000.

A. Complainant contends that it has a trademark and service mark in CALLE 13 in Spain and throughout Latin America and that the Domain Names are identical with and confusingly similar to the CALLE 13 trademark and service mark pursuant to the Policy paragraph 4(a)(i).

Complainant contends that Respondent has no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii).

Complainant contends that Respondent registered and is using the Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii).

B. Respondent contends that Complainant fails to prove that it has a United States trademark to which the Domain Names are identical or confusingly similar.

Respondent contends that it does have rights or legitimate interest in the Domain Names because he has applied with the United States Patent and Trademark Office for registration of CALLE 13 and intends to use the Domain Names to establish a website.

Respondent contends that his registration and use of the Domain Names are not in bad faith because he never intended to sell or rent the Domain Names and never intended to cause confusion or mislead customers.

Identity or Confusing Similarity

The initial issue to be resolved is whether Complainant is required to have a trademark or service mark in the United States in order to comply with the requirement of the Policy paragraph 4(a)(i). The Sole Panelist finds that there is no requirement that the trademark or service mark right asserted by Complainant be in the United States. Here Complainant has registered its trademark and service mark throughout the Spanish and Portuguese speaking countries in the world. Respondent does not contest the validity of these marks. Therefore, the Sole Panelist finds that the internationally registered marks of Complainant are sufficient to meet the requirements of the Policy paragraph 4(a)(i).

But for the first level domains ".com" and ".net," the Domain Names "calle13.com" and "calle13.net" are identical to Complainant’s CALLE 13 mark. See e.g., Alcoholics Anonymous World Services, Inc. v. Lauren Raymond, WIPO Case No. D2000-0007 (March 6, 2000); Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 (February 29, 2000).

Therefore, the Sole Panelist finds Complainant has rights in the marks CALLE 13 and that the Domain Names are identical with or confusingly similar to the CALLE 13 marks pursuant to the Policy paragraph 4(a)(i).

Rights or Legitimate Interest.

Complainant has neither licensed nor otherwise permitted the Respondent to use the CALLE 13 marks or to apply for or use any domain name incorporating the CALLE 13 marks. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, & 7.2 (February 18, 2000).

The Policy paragraph 4(c) allows three methods for Respondent to demonstrate that it has rights or a legitimate interest in the Domain Names:

(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.

Respondent asserts that he has made bona fide use of the Domain Names through his application to the United States Patent and Trademark Office for registration of CALLE 13. The existence of a pending application to the United States Patent and Trademark Office is not conclusive regarding the purported rights of Respondent. This application appears from the evidence submitted to the Sole Panelist to remain subject to objection by Complainant.

Respondent has asserted his intention to develop a website using the Domain Names, but has offered no evidence that actual content has been posted. Nor has the Respondent offered any evidence of demonstrable preparations to use the Domain Names in connection with a bona fide offering of goods or services. Therefore, the Sole Arbitrator finds that Respondent has failed to offer sufficient evidence to sustain the elements of the Policy paragraph 4(c)(i).

Respondent also argues that he is making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain, to misleadingly divert consumers or to tarnish the marks at issue. However, Respondent admits that he has offered to sell the Domain Names to Complainant for US$100,000. Therefore, the Sole Panelist finds that Respondent has failed to prove the elements of the Policy paragraph 4(c)(iii).

Having failed to meet the necessary elements of the applicable portions of the Policy paragraph 4(c) or to offer other evidence of rights or legitimate interests, the Sole Panelist finds that Respondent has no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii).

Bad Faith

The Policy paragraph 4(b) sets forth four criteria for bad faith registration and use of domain names:

(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 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 or service on your web site or location.

Respondent registered the Domain Names at issue two months after the introduction of the "CALLE 13" channel in Spain. Shortly after the Domain Names were registered, the Respondent contacted representatives of the Complainant and offered to sell the domain names for US$100,000. Again on February 28, 2000, the Respondent contacted the Complainant and stated that his request for US$100,000 was modest when compared to a valuation for the domain names he obtained from an auction website for domain names, namely, www.greatdomains.com. Respondent admits that he offered to sell the Domain Names to Complainant for US$100,000.

Based on the foregoing, the Sole Panelist finds that the Respondent registered or acquired the Domain Names "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration[s] for valuable consideration in excess of [the] documented out-of-pocket costs directly related to the domain name[s]" under the Policy paragraph 4(b)(i).

Therefore, the Presiding Panelist finds that Respondent has registered and used the Domain Names in bad faith pursuant to the Policy paragraph 4(a)(iii).

The Sole Panelist concludes (a) that the domain names "calle13.com" and "calle13.net" are identical with and confusingly similar to the marks CALLE 13, (b) that Respondent has no rights or legitimate interest in the Domain Names and (c) that Respondent registered and used the Domain Names in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Sole Panelist orders that the Domain Names be transferred to Universal City Studios, Inc.

Richard W. Page
Presiding Panelist

August 17, 2000