Generic Top Level Domain Name (gTLD) Decisions

The Complainant is StarMedia Network, Inc., New York, NY, USA ("Complainant") represented by Kerry A. Brennan, of Pillsbury Winthrop LLP. The Respondent is Latinchat, Buenos Aires, Argentina ("Respondent").

The domain name at issue is <latinchat.net>, registered with Network Solutions, Inc.

On May 2, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele as Panelist. The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on April 4, 2001; the Forum received a hard copy of the Complaint on April 6, 2001.

On April 6, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <latinchat.net> is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").

On April 6, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 26, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@latinchat.net by e-mail. A timely response was received and determined to be complete on April 26, 2001.

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

Respondent claims a legitimate interest in the domain name by having a first and continuous use of the name by having registered the name LATINCHAT with various Internet services beginning in December, 1997 and since January 10, 1998 has provided chat rooms in the Spanish language. Respondent claims that the name LATINCHAT.NET was registered as a domain name before the Complainant made application for its trademark. Respondent claims that the domain name is a combination of two generic terms and Complainant cannot show that either is exclusively associated with its business. Respondent denies that his use of the name LATINCHAT.NET is in bad faith.

C. Additional Submissions

Complainant filed a timely supplemental response on May 4, 2001. Respondent filed a supplemental response after the deadline and failed to send the required fee.

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") instructs this Panel to "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."

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

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

(3) the domain name has been registered and is being used in bad faith.

Respondent does not dispute the names are identical.

Rights or Legitimate Interests

Respondent is not affiliated with Complainant and offers nearly identical services as Complainant. Respondent claims to have rights and legitimate interests in the domain name because he first used the name LATINCHAT, however this use has not been proven. Registration of an account with a website standing alone does not prevent another person from registering the name as their domain name.

The terms Latin and chat are obviously generic terms. Whether combining the terms into LATINCHAT can create a protected name is better left to a court or trademark office tribunal.

Respondent has not shown that Complainant’s predecessor had notice of any of his claimed uses of the mark at the time it registered the domain name LATINCHAT.COM in April 1998. But, prior to Respondents registration of LATINCHAT.NET in December, 1998 Complainant had registered its mark. At the time Respondent registered LATINCHAT.NET, he was on notice that Complainant’s domain name had been registered, and was being used for offering some of the same services that Respondent claims to offer. Respondent registered the domain name in bad faith by using Complainant’s mark in his domain name and thereby created a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, and endorsement of the Respondent’s web site and services.