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Todito.com, S.A. de C.V. v. Affordable Webhosting, Inc. [2004] GENDND 1364 (11 October 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Todito.com, S.A. de C.V. v. Affordable Webhosting, Inc.

Case No. D2004-0688

1. The Parties

The Complainant is Todito.com, S.A. de C.V., of México, D.F., Mexico, represented by Glast, Phillips & Murray, P.C., United States of America.

The Respondent is Affordable Webhosting, Inc., of Manzanita, Oregon, United States of America, represented by The DuBoff Law Group, LLC, United States of America.

2. The Domain Name and Registrar

The disputed domain name <todomail.com> is registered with Dotster, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2004. On August 31, 2004, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the domain name at issue. On August 31, 2004, Dotster, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 September 2, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was September 22, 2004. The Response was filed with the Center on September 17, 2004.

The Center appointed Alberto de Elzaburu as the Sole Panelist in this matter on September 27, 2004. 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.

It is to be noted that the Complainant made an additional submission on September 24, 2004, with a view to refuting certain statements contained in the Response to the Complaint. As a result, the Respondent sought permission to submit a sur-reply to that additional submission. Exercising the discretionary powers conferred upon it under paragraph 10 of the Rules, the Panel decided, so as not to draw out the proceeding unnecessarily and in the light of the criterion followed in, for example, WIPO Case No. D2001-0571, Colegio Oficial de Registradores de la Propiedad y Mercantiles de España v. Mariscal y Rivaya, and others mentioned therein, that it would not take Complainant’s additional submission of September 24, 2004 into consideration. It was therefore not necessary to grant the authorization, requested by the Respondent’s representative, to file a sur-reply, bearing in mind, furthermore, that the additional submission of the Complainant did not, in any event, introduce any relevant new material.

4. Factual Background

4.1 The Complainant is the owner of U.S. trademark registration No. 2.554.685 TODITO.COM, filed on October 13, 1999, and granted on April 2, 2002, to cover telecommunications services, including electronic mail services.

4.2 The disputed domain name was registered on August 13, 2002.

4.3 The website “www.todomail.com” has a link to the website “www.affordablewebhosting.com” where there are various links to advertising pages of other companies but no specific content. All those advertising links appear under the heading ToDoMail.com.

5. Parties’ Contentions

A. Complainant

In its brief, the Complainant alleges that:

- It is the owner of the above mentioned TODITO.COM trademark registration in the United States.

- It is the user and proprietor of the unregistered common-law trademark TODITOMAIL to identify its electronic mail service, as well as of the <toditomail.com> domain name.

- The disputed <todomail.com> domain name is confusingly similar to the Complainant’s TODITO.COM and TODITOMAIL trademarks, particularly considering that the Spanish word TODITO means “a little bit of everything” whereas the Spanish word “TODO” means “everything”, this being a relevant circumstance since the Complainant’s trademarks are intended for Spanish-speaking consumers.

- The Respondent’s domain name constitutes a mere passive holding with no bona fide offering of goods or services and the Respondent is not known by the name “todomail” and therefore has no legitimate rights or interests in the domain name.

- The Respondent’s mere passive holding of the domain name may be considered evidence of bad faith, as held in several UDRP Panel decisions.

As a result, the Complainant petitions that the <todomail.com> domain name be transferred to it.

B. Respondent

In its reply to the complaint, the Respondent points out the following:

- That the <todomail.com> domain name is not confusingly similar to Complainant’s trademarks TODITO.COM or its alleged common law mark TODITOMAIL.

- That the Complainant cannot claim rights in the word “TODO”.

- That there is no likelihood of confusion because, as can be seen from the advertisements on the site, the Respondent’s domain name is intended for English speakers whereas Complainant’s marks are intended for Spanish speakers.

- Respondent has a legitimate interest in the domain name and has used it for corporate email services and advertising.

- Respondent has not attempted to mislead or divert customers from Complainant’s business and has always acted in good faith, as is shown by its prompt reply to Complainant’s earlier demand letter.

- The decisions cited by Complainant are not applicable to this case given that the domain name is not confusingly similar to Complainant’s trademarks and it has not evidenced that the domain name is being used in bad faith.

6. Discussion and Findings

The premises for accepting the complaint, as per paragraph 4 of the Policy, are as follows:

- The domain name registered by the Respondent must be identical to, or be sufficiently similar to give rise to confusion with a trademark for goods or services in which the Complainant holds rights.

- The Respondent must have no rights or legitimate interests in relation to the domain name; and

- The domain name must have been registered and be used in bad faith.

A. Identical or Confusingly Similar

The Complainant has claimed its ownership of U.S. trademark registration No. 2.554.685 “TODITO.COM” as well as of its common law trademark TODITOMAIL.

With respect to the possible existence of rights acquired through use of the TODITOMAIL trademark claimed by the Complainant, it only provided a printout of its website from which it does indeed follow that it uses the expression TODITOMAIL for its e-mail service. However, it did not evidence that this use has been sufficiently extensive to allow it to say that unregistered rights have accrued.

The following was held in WIPO Case No. D2004-0205, Essential Travel Ltd v. essentialtravel.com and Underground Digital Media Ltd.:

“To acquire common law trademark rights, both under English law and under the case law which has developed under the Policy, a Complainant must establish evidence of acquired distinctiveness. The burden in this respect is particularly high where the mark asserted comprises words in common usage – namely, ESSENTIAL TRAVEL – as it does in this case.”

With respect to the TODITO.COM trademark registration, in the opinion of the Panel, it cannot be held that the <todomail.com> domain name is confusingly similar to the TODITO.COM mark. The terms are sufficiently dissimilar from the standpoint of both appearance and sound and a certain similarity might be found only in the fact that both terms could be understood to come from the Spanish word “TODO”. However, the fact that both terms may evoke such a generic concept is not in itself sufficient to claim that they are confusingly similar.

The Complainant claims that, if there are doubts as to the existence of confusing similarity, the decision must always favor the Complainant as it is the owner of prior rights and, in this respect, it cites WIPO Case No. D2000-0810, America Online, Inc. v. Go2North.Com, Inc.. However, in that case, the disputed domain name was not an almost generic expression. When considering only slightly distinctive terms, a greater degree of similarity is necessary to be able to assess a risk of confusion.

Indeed, in the absence of identity between the trademark and the domain name, the Panel believes that, when determining whether their similarity may give rise to situations of confusion or false association, it is necessary to consider not only the degree of similarity of the terms in a strict sense but also the degree of distinctiveness of the mark given that, obviously, the greater the distinctiveness or originality of the registered trademark, the greater the risk of confusion. In the case in question, because of their meaning, both the trademarks claimed by the Complainant and the very domain name in dispute are only slightly distinctive given that they are based on pre-existing generic expressions. Therefore, the Panel is of the opinion that the terms are not sufficiently similar to assess a risk of confusion.

The Complainant has failed under the first element, and it is therefore not necessary for this Panel to look at the second and third elements of the Policy. The Panel will nevertheless give below some short comments as to these two elements.

B. Rights or Legitimate Interests

The Complainant claims it has not authorized the Respondent to use the domain name in dispute, in reply to which the Respondent denies that the domain name and the Complainant’s trademarks are confusingly similar. Since the Panel has established that there is no likelihood of confusion between the two, the Complainant’s claim in this respect must be dismissed.

On its part, the Respondent claims it has used the domain name for corporate e-mail services and advertising since it was registered. In the Panel’s opinion, it has not provided sufficient evidence of the use of the domain name for these e-mail services although the domain name does appear to be in use to give access to a page with no content of its own but with advertising of another type. In any event, this use does not allow a conclusion to be reached concerning the alleged non-existence of rights and legitimate interests in the disputed domain name.

As pointed out in the decision on WIPO Case No. D2002-0032, Action Concepts, Inc. d/b/a Fast Forward v. Rakuten USA, also cited in WIPO Case No. D2002-0406, Telefónica de Argentina, S.A. v. D. Pablo Castruna: “In these proceedings the onus is on Complainant to make out each of the grounds specified in paragraph 4(a) of the Policy. To make a showing that Respondent has no legitimate right or interest in the domain name, Complainant must as least set up a prime facie case and cast upon Respondent an onus of rebuttal”.

In this case, the Panel considers it doubtful whether the Complainant has succeeded in submitting any evidence or relevant indication from which it can be assumed that the Respondent has no right or legitimate interest in the disputed domain name. As stated above, it is, however, not necessary for the Panel to reach a conclusion under this element of the Policy.

C. Registered and Used in Bad Faith

As already mentioned, the domain name in question provides access to a website with no content of its own but rather contains different advertisements offering third-party goods and services. However, this use does not reveal the existence of any intention to create an association with the Complainant’s website or with its registered trademark. Therefore, the existence of the circumstance described in paragraph 4(b)(iv) of the Policy can be ruled out.

Neither is there any evidence or indication allowing it to be considered that the case falls under the circumstances provided for in paragraph 4(b), sub-paragraphs (i), (ii) or (iii), of the Policy. It does not follow from the evidence submitted that the Respondent registered the domain name for the purpose of selling it to the Complainant for valuable consideration. Neither does it follow that the Respondent registered the domain name for the purpose of preventing the Complainant from using it (in fact, the Complainant offers its own e-mail service) and neither, in short, is there any evidence or indication allowing it to be properly assumed that the Respondent registered the domain name mainly for the purpose of disrupting the Complainant’s business.

In the opinion of the Panel, when judging the possible presence of not only bad faith on the part of the Respondent but also of the remaining elements necessary for the Policy to be applicable, the very meaning of the domain name in question must be analyzed. In this case, it is perfectly admissible to assume that the Respondent selected <todomail.com> because of its meaning either in Spanish or in English. The expression “TODO MAIL” may be attractive in Spanish, as is demonstrated by the existence of other marks or terms such as “TODOCOCHES”, “TODOPISOS”, etc. on the market. In English, the term may be based on the meaning of the expression “TO DO” and, in fact, that appears to be the meaning given to the domain name on the Respondent’s very website which displays a title consisting of the domain name reproduced as “ToDoMail”.

In short, the Panel finds that no evidence or indication has been submitted allowing it to be assumed that the Respondent registered the domain name with the Complainant’s trademark in mind. On the contrary, based on the case file, it seems more likely to this Panel that the Respondent registered the expression “TODOMAIL” because of its meaning in English or in Spanish. Thus, as held in Atlantic Coast of America Corporation Ltd., v. Steven Zaharakis dba Zahara Labs, WIPO Cases No. D2002-0008 and Telefónica de Argentina, S.A. v. D. Pablo Castruna, WIPO Case No. D2002-0406, the Complainant’s mere assertion that it is convinced of the Respondent’s bad faith is not sufficient to consider the circumstance proven.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Alberto de Elzaburu
Sole Panelist

Dated: October 11, 2004