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Latin Telecomunicaciones S.A. v. Whoisguard [2005] GENDND 1061 (20 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Latin Telecomunicaciones S.A. v. Whoisguard

Case No. D2005-0380

1. The Parties

The Complainant is Latin Telecomunicaciones S.A., Santiago de Chile, Chile, represented by Cuatrecasas Abogados, Spain.

The Respondent is Whoisguard, Westchester, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name is <latintelecom.com> (the “Domain Name”) and is registered with eNom Inc, United States of America (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) electronically on April 12, 2005. The signed original with attachments was received by the Center on April 15, 2005.

On April 13, 2005, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the current registrant of the Domain Name is “Whoisguard” 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 May 3, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 23, 2005. The Respondent did not submit any response. Accordingly, the Center transmitted electronically to the Respondent a Notification of Respondent Default on May 26, 2005.

The Center appointed Anna Carabelli as the sole panelist in this matter on June 6, 2005, indicating that, absent exceptional circumstances, the decision would be due by June 20, 2005. 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 and independently determined and agreed with the assessment of the Center that the Complaint formally complies with the requirements of the Policy, the Rules and the Supplemental Rules.

4. Factual Background

The Complainant has provided evidence (Attachment II to the Complaint) of registration of the Chilean trademark “LATIN TELECOM” which was requested on June 24, 1994, published on September 13, 1994, and registered on April 16, 1999, (Reg. number 538840) in connection with international class of goods and services n. 42.

The Complainant has further provided evidence (Attachment III to the Complaint) of registration of the following domain names: <latintele.com> and <latintelecom.cl> made on January 16, 1998, and on September 10, 2004, respectively.

The Domain Name was registered by the Respondent on January 26, 2000. According to the information supplied by the WhoIs database as provided by the Registrar, registration is in the name of Whoisguard. The Complainant has been unable to provide reliable information on the real Respondent’s identity as the Respondent deliberately used a service called “Whoisguard service” aimed at hiding his/her real data. According to such a service, the data of the registrant of a domain name are not posted in the WhoIs database, but a generic reference to “Whoisguard” is made instead (Attachments IV-VIII).

At present the Domain Name is inactive (there is no current website available at or linked to the Domain Name - Attachment XI to the Complaint) but in the past it had been linked to different websites, including the Complainant’s website (Attachments XII and XIII to the Complaint).

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- it is one of the leading telecommunications companies of Chile and South America and the official distributor of the most reputed manufacturers of audio and video-conference systems in Chile and part of Latin America; it is one of the leading companies in the field of design and implementation of telecommunications networks;

- its corporate website is located at “www.latintele.com”;

- its domain names <latintele.com> and <latintelecom.cl> are presently directed to its website, where information on its services and on the company itself may be found;

- at present the Domain Name is inactive (there is no current website available at or linked to the Domain Name - Attachment XI to the Complaint) but in the past it had been linked to different websites, including the Complainant’s website (Attachments XII and XIII to the Complaint).

- in particular, between February 2003 and August 2003, and between November 2003 and March 2004, the Domain Name was linked to the Complainant’s website. Such a use forced the Complainant to develop a web solution that informed all users that they had accessed its website by means of a domain name that was not owned by it;

- between June 2002 and February 2003, the Domain Name was linked to the corporate website of Thuraya Satellite Telecommunications Company, a United Emirates company which provides satellite-based telephone services, operating in North, Central and Southern Africa, Europe, Middle East and Central and Southern America, Europe, Middle East and Central and South Asia (Attachment XIII to the Complaint); between August 2003 and November 2003, the Domain Name was linked to the website of Google News;

- the Domain Name is identical to the Complainant’s trademark “LATIN TELECOM”, the only difference between the two being the mere absence of a space between the two words contained in the Domain Name as well as the inclusion of the “com” suffix;

- the Respondent has no right or legitimate interest in the Domain Name because: (i) since its registration, the Domain Name has not been linked to a unique website, but to different websites not owned or developed by the Respondent (among which the Complainant’s one); (ii) the Respondent decided to hide his/her identity by using the “Whoisguard service”, which suggests that the Respondent is not commonly known by the Domain Name; (iii) the Respondent, by keeping the Domain Name inactive or linking it to third parties’ websites, is not making a non-commercial or fair use of the Domain Name; no other circumstance shows that the Respondent holds rights to or legitimate interests in the Domain Name, since he is not linked to the Complainant by any agreement whatsoever;

- the Respondent registered the Domain Name in bad faith as its only purpose was to prevent the Complainant from using it; since the Domain Name was registered about five years after the Complainant had begun its activities by using the trademark “LATIN TELECOM”, it is clear that at the moment of registration the Respondent was in bad faith. The Respondent’s bad faith is also confirmed by the fact that after registration the Domain Name was linked for a time to the Complainant’s website as well as to other telecommunications operators, and by the fact that the Respondent hid himself/herself under false or misleading contact information;

- the Respondent used the Domain Name in bad faith since: (i) the direction of the Domain Name to the Complainant’s website appears to be an express recognition by the Respondent not only of the Complainant, but of the Complainant’s activities; (ii) keeping the Domain Name inactive is not a good faith use; iii) there is no evidence of actual or intended use in good faith of the Domain Name.

B. Respondent

The Respondent did not file any Response and is in default.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Under paragraph 4(a) of the policy, the Complaint must prove each of the following:

(i) the domain name in issue is identical or confusingly similar to the Complainant’s trademark or service mark; 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.

Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for the purposes of paragraph 4(a)(iii), shall be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which, if proved by the Respondent, shall be evidence of the Respondent’s rights to or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii) above.

A. Identical or Confusingly Similar

The only difference between the Domain Name and the Complainant’s trademark “LATIN TELECOM” is the absence of a space between the words “latin” and “telecom” and the inclusion of the suffix “com”.

It is a well established principle that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark (See Chernow Communications Inc. v. Jonathan D. Kimball, WIPO Case No. D2000-0119; BIC Deutshland GmbH & Co KG v. Paul Tweed, WIPO Case No. D2000-0418; The Channel Tunnel group Ltd. v. Powell, WIPO Case No. D2000-0038). It has also been consistently affirmed that the mere addition of a generic term and/or number as well as slight spelling variations do not create a different trademark and cannot be considered sufficient to avoid confusion between the domain name and the complainant’s trademark (GA Modefine SA v. Riccardo Bin Kara-Mat, WIPO Case No. D2002-0195; Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022; Nintendo of America, Inc. v. Gray West International,WIPO Case No. D2000-1219; Toshiba Corporation v. Distribution Purchasing & Logistics Corp, WIPO Case No. D2000-0464 – see also A & F Trademark Inc., Abercrombie & Fitch Stores Inc, Abercrombie & Fitch trading Co. Inc. v. Party Night Inc, WIPO Case No. D2003-0172; Lanco Inc., Lane Bryant Inc. and Charming Shoppes Inc. v. Party Night Inc. c/o Peter Carrington, WIPO Case No. D2003-0173; Dr. Ing. h.c. F. Porsche AG v. Domains by Proxy Inc. and Vladimir Putinov, WIPO Case No. D2004-0311; Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330; Oxygen Media, LLC v. Primary Source, WIPO Case No. D2000-0362).

The Panel finds a fortiori that the mere presence of a blank space between the word “Latin” and the word “Telecom” does not alter the fact that the Domain Name is identical to the mark “LATIN TELECOM”.

In light of the above and of the fact that the addition of the suffix “com” has no legal significance when comparing the Domain Name and the Complainant’s trademark (The Vanguard Group Inc. v. Lorna Kang, WIPO Case No. D2002-1064; Ahmanson Land Company v. Vince Curtis, WIPO Case No. D2000-0859), the Panel finds that this element has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of rights or legitimate interests in a domain name: (i) use of, or preparations to use, the domain name in connection with a bona fide offering of goods or services; (ii) the fact that the respondent has commonly been known by the domain name; and (iii) legitimate non-commercial or fair use of the domain name.

The Complainant’s contends that the Respondent has not used the Domain Name in connection with a good faith purpose considering that: (i) the Domain Name had been linked to different websites certainly not owned or developed by the Respondent and is currently inactive; (ii) the Respondent has deliberately hidden his/her identity through the Whoisguard service and this excludes that the Respondent has been commonly known by the Domain Name; and (iii) the Whoisguard service has often been used in relation with many bad-faith uses of domain names.

In the Panel’s view, the Complainant has established prima facie evidence that none of the three circumstances establishing legitimate interests or rights mentioned above applies. As stressed by many WIPO UDRP decisions, in such a case the burden of proof shifts to the Respondent to rebut the evidence (see among others Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683; Ditting Maschinen AG v. I.C.T. Company, WIPO Case No. D2003-170; Universal City Studios Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-784).

The Respondent has not filed any submission or evidence whatsoever. There is no evidence before the Panel that the Respondent has any rights or legitimate interests in the Domain Name for the purpose of paragraph 4(a)(ii) of the Policy under the above criteria or otherwise.

The Panel therefore finds that the Respondent has no rights and/or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

Based on the Complaint and the supporting evidence attached thereto, the Panel accepts that the Complainant’s trademark “LATIN TELECOM” is being widely used to identify the telecommunications services offered by the Complainant and has acquired reputation especially in Chile and South America.

The Domain Name was registered on January 26, 2000, almost five years after the Complainant had begun its activities.

As established under paragraphs A. and B., the Domain Name is identical to the Complainant’s trademark and the Respondent has no rights or legitimate interests in the Domain Name.

Given all the above circumstances, it is very unlikely that the Respondent, at the time he registered the Domain Name, was not aware that he was infringing the Complainant’s trademark. In addition, according to the Complainant’s contentions and based on Attachments XII and XIII to the Complaint, it appears that the Domain Name had been linked to the Complainant’s website. This fact further supports the above conclusion.

The Panel finds therefore that the Domain Name was registered in bad faith.

On the other hand, through the redirection of the Domain Name to third parties’, and particularly to the Complainant’s, websites the Respondent has used the Domain Name in bad faith by creating a likelihood of confusion with Complainant’s trademark and services (Caia de Ahorros de Vitoria y Alava – Araba Eta Gazteiko Aurrezki Kutxa Caja Vital v. El Tempranillo, WIPO Case No. D2004-0066; Banco Zaragozano S.A. v. Constramat y D. Fernando Labadia Pard WIPO Case No. D2004-0044).

In addition, the current passive holding of the Domain Name (which presently does not correspond or redirect to any web site) confirms the Respondent’s bad faith use of the Domain Name. Since Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (see also the recent Redcats S.A. And La Redoute S.A. v. Tumay Asena, WIPO Case No. D2001-0859) it has been held that the “passive holding of a domain name may be sufficient to constitute bad faith use, taking into consideration the overall context of Respondent’s behaviour” which, in the case in hand, includes, in addition to the above mentioned circumstances, deliberately recourse by the Respondent to the “Whoisguard service” for the purpose of hiding his/her real identity.

The Panel therefore concludes that also the third element under paragraph 4(a) of the Policy has been established.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.

Anna Carabelli
Sole Panelist

Dated: June 20, 2005