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Eurochannel, Inc. (f/k/a Multithematiques, Inc.) v. Papete.comCase No. D2005-0318 [2005] GENDND 1130 (2 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Eurochannel, Inc. (f/k/a Multithematiques, Inc.) v. Papete.com

Case No. D2005-0318

1. The Parties

The Complainant is Eurochannel, Inc. (f/k/a Multithematiques, Inc.), Miami Beach, Florida, United States of America, represented by WermuthLaw P.A., United States of America.

The Respondent is Papete.com , Panama City, Panama , represented by Greenberg & Lieberman, United States of America.

2. The Domain Name and Registrar

The disputed domain name <eurochannel.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 29, 2005. As filed, the Complaint named Mrs. Jello, LLC as Respondent. On March 30, 2005, Complainant filed with the Center an “Amendment to Complaint” adding Papete.com as a Respondent. The disputed domain name apparently was transferred from Mrs. Jello, LLC to Papete.com on or about March 28, 2005. On March 30, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On March 31, 2005, eNom 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 April 6, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was April 26, 2005. The Response, which is dated April 26, 2005, was filed with the Center via email on April 27, 2005.

On May 4, 2005, Complainant filed a “Supplement to Complaint.” In accordance with paragraph 10 of the Rules, the Panel, exercising its discretion, votes to consider this supplemental filing.

Complainant requested a single-member panel. Exercising its right under paragraph 5(b)(iv) of the Rules, Respondent requested a three-member panel. The Center appointed Jeffrey M. Samuels, Richard G. Lyon and Alan L. Limbury as panelists in this matter on May 19, 2005. The Panel finds that it was properly constituted. Each member of 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.

4. Factual Background

Complainant Eurochannel, Inc. produces and transmits television programming via satellite, cable, and the Internet. Complainant’s services were first launched in Brazil in 1994. Since February 2002, Complainant has maintained operations in Miami, Florida, USA.

Complainant owns registrations for the mark EUROCHANNEL in numerous countries throughout Latin America, including Brazil, Bolivia, Chile, Costa Rica, Ecuador, and Peru.¹ See Complaint, Annex 4. On February 8, 2002, Complainant filed with the United States Patent and Trademark Office (USPTO) an application to register the mark EUROCHANNEL and DESIGN (apparently consisting of a stylized letter “C”), as intended to be used in connection with telecommunication and related services. The mark (with a disclaimer of exclusive rights in the term “EUROCHANNEL” apart from the mark as shown) was approved for publication. The requisite Statement of Use has been filed and accepted by the USPTO and the mark will register in due course.

The disputed domain name <eurochannel.com> was registered by Mrs. Jello, LLC on December 18, 2002. Complainant, thereafter, offered to purchase the domain name for 1,000 euros. In response, Mrs. Jello demanded 10,000 euros to transfer the domain name. On March 21, 2005, Complainant’s counsel wrote to Mrs. Jello offering $1,500 (U.S.) for transfer of the domain name, which offer was to remain open until March 31, 2005. The domain name <eurochannel.com> was transferred from Mrs. Jello LLC to Papete.com on or about March 28, 2005.

5. Parties’ Contentions

A. Complainant

In its Complaint², Complainant argues that the domain name and the EUROCHANNEL mark are identical. It further maintains that Respondent has no rights or legitimate interests in respect of the domain name. There is no evidence, Complainant urges, of the Respondent’s use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services, that Respondent is commonly known by the domain name or possesses any relevant trademark or service mark rights, or that Respondent is making a legitimate noncommercial or fair use of the domain name.

In fact, Complainant contends, Respondent’s sole business purpose and intention is to resell domain names. Respondent acquires many domain names when their original registrants fail to renew the registrations. According to Complainant, pending resale of the domain names, Respondent uses its affiliated company, DomainSpa, LLC, to offer various content/advertising on the “parked” domains. DomainSpa promotes its services as being designed for “parked” domain names.

Complainant asserts that the domain name in issue was registered and is being used in bad faith. In support of such assertion, Complainant maintains that the domain name was registered primarily for the purpose of reselling it to Complainant for a sum in excess of Respondent’s out-of-pocket cost and that Respondent intentionally attempted to attract for commercial gain internet users to its web site by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s site or of the products or services offered at such site.

According to Complainant, the declared purpose of Respondent’s actions is to appropriate the valuable web site traffic and to obtain the high resale value associated with the domain name as a result of the prior owner’s failure to renew the registration.

In its “Amendment to Complaint,” Complainant notes that the domain name <eurochannel.com> was transferred from Mrs. Jello, LLC to Papete.com on March 28, 2005. Complainant insists that the domain name is “parked” in the same manner as it was by Mrs. Jello and that there is no evidence that Papete.com has rights or legitimate interests in the domain name. Complainant further insists that “there is strong reason” to believe that Papete.com registered and is using the domain name in “bad faith” for the same reasons previously advanced against Mrs. Jello.

The Amendment to Complaint concludes as follows: “For [these] reasons, the Complainant hereby amends the Complaint to include Papete as a Respondent and requests that references in the Complaint to the Respondent be understood to mean Mrs. Jello or Papete.com or both of them.”

B. Respondent

As a preliminary matter, Respondent emphasizes that since the sole domain name holder is Papete.com, there are no claims or remedies against Mrs. Jello, LLC.

By way of background, Respondent notes that Respondent Papete.com’s principal business address is in Panama City, Panama and that the domain name <eurochannel.com> was originally registered (by an unknown registrant) in October 1997 and then transferred to Eurochannel Broadcasting (which is not affiliated with Complainant). Eurochannel Broadcasting continued as registrant until its registration expired in September 2002, and Mrs. Jello acquired the domain name on or about December 2002. The disputed domain name was transferred to Papete.com on March 21, 2005, prior to any notification of the instant UDRP proceeding.

As set forth in the “Response,” Papete.com acquired the domain name <eurochannel.com> because it consisted of ordinary English words or generic terms and because such terms have many meanings allowing for the development of various web pages to be used for various purposes. At the present time, the web page to which the domain name resolves is a generic domain sponsor page.

Focusing on the specific UDRP factors, Respondent first urges that Complainant does not have exclusive rights in the term “EuroChannel.” It contends that the existing registrations for EUROCHANNEL are invalid as to Eurochannel Inc. in that there is no evidence that any change of name document was submitted to the appropriate authorities in Chile and Ecuador. Respondent further notes that, with respect to Complainant’s U.S. trademark application, Complainant was required to disclaim exclusive rights in the term “EUROCHANNEL” apart from the mark as shown. According to Respondent, the disclaimer represents Complainant’s concession that “Eurochannel” is a generic description of the goods and/or services that the mark is used to identify and that Complainant only has rights to “EUROCHANNEL” when used with the stylized “C” portion of the mark.

According to Respondent, the term “Eurochannel” is not inherently distinctive nor has it acquired distinctiveness. At best, Respondent urges, the term is descriptive of Complainant’s targeted TV market. Moreover, Respondent continues, the single words “Euro” and “Channel” are distinct generic terms to which no entity can claim exclusive rights and, when used together, the terms are still a generic identifier because it is commonly used to designate the famous tunnel built between the United Kingdom and France and, geographically, to designate the shipping route between the deeper parts of the North Sea and the harbor of Rotterdam. Respondent further points out that numerous third parties use the term “Eurochannel,” either singularly or in conjunction with other terms, to identify their products and/or services.

Respondent further asserts that it clearly has a legitimate interest in the disputed domain name. It contends that it acquired the domain name because it was a generic domain name with many development possibilities to promote its web site. The use of such a “legitimately” acquired domain name for advertising and promotion, according to Respondent, constitutes use in connection with a bona fide offering of goods or services.

Finally, Respondent argues that Complainant has failed to establish the requisite “bad faith” registration and use. Respondent maintains that it did not acquire or purchase the domain name with intent to sell it to Complainant. Rather, the amount requested by Mrs. Jello, LLC³ merely tends to show a reasonable business response to an inquiry about purchasing a business asset. Respondent further contends that there is no evidence that Respondent knew of Complainant or its marks when it obtained the domain name and notes that it was Complainant who initiated the offer to purchase the domain name.

According to Respondent, it “[i]s well-established under the UDRP Policy that, where a trademark or service mark is an ordinary English term or phrase, as is the case here, bad faith can only be proven if there is evidence that Respondent registered the domain name ‘specifically to sell to the Complainant,’ or that the ‘value of [the] domain derived exclusively from the fame of [the] trademark’.” Respondent argues that there is no evidence to support such intent on the part of Respondent or on the part of Mrs. Jello.

Respondent further argues that there is nothing on the <eurochannel.com> web site that would create the impression that the site is affiliated with Complainant. Therefore, Respondent asserts, users accessing Respondent’s web site would not be confused when landing at <eurochannel.com>. Respondent maintains that paragraph 4(b)(iv) of the Policy requires evidence that Respondent intended to create a likelihood of confusion.

Respondent requests that the Panel determine that this action was brought in bad faith and, as such, constitutes reverse domain name hijacking within the meaning of paragraph 15(e) of the Rules. Respondent argues that there is a “complete lack of evidence” that the disputed domain name, consisting of generic terms and/or a generic phrase, was registered or is being used for reasons related in any way to Complainant or its marks.

C. Supplementary submission

In its “Supplement to Complaint,” Complainant notes that Papete.com is located in Panama City, Panama and that Complainant’s TV channel has been continuously broadcast in Panama City, Panama, via the country’s leading cable operator since on or about March 2003.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel concludes that the domain name <eurochannel.com> is, for all intents and purposes, identical to the EUROCHANNEL mark. The addition of the top level domain designation “.com” is of no legal significance in determining whether a mark and domain name are identical or confusingly similar. See, e.g., VAT Holding AG v. vat.com, WIPO Case No. D2000-0607 (vat.com identical to VAT trademark).

The Panel further concludes that Complainant has rights in the EUROCHANNEL mark. The evidence establishes that Complainant owns trademark registrations for EUROCHANNEL in Brazil, Bolivia, Chile, Costa Rica, Ecuador, and Peru. While the evidence does not establish that a change of name from Multithematique Inc. to Eurochannel Inc. was filed with the Chilean and Ecuadorian trademark offices, Respondent has not presented evidence that such failure renders Complainant’s registrations in Chile and Ecuador invalid. Moreover, even if such was the case, Complainant still owns registrations for EUROCHANNEL in Brazil, Bolivia, Costa Rica, and Peru.

The issuance of such registrations indicates that, at least in the view of the relevant authorities, EUROCHANNEL, as used by Complainant, is a protectable mark and is not generic. As a matter of Policy, absent extraordinary circumstances, the Panel does not believe it has the authority or should be put in the position of second-guessing the determinations of national trademark offices. See, e.g., Thaigem Global Marketing Ltd. v. Sanchai Aree, WIPO Case No. D2002-0358.

Moreover, as a matter of law, the fact that “Eurochannel” consists of ordinary English words or also references to a famous tunnel and geographic place does not mean that such term, as used by Complainant in connection with its telecommunications and related services, is not protectable. Indeed, the Panel takes judicial notice of the fact that many, if not most, trademarks, e.g., TIDE detergent, CREST toothpaste, consist of ordinary English words.

It is true that the USPTO has apparently determined that the term “Eurochannel” alone, as used by Complainant, is, at most, merely descriptive and, thus, not protectable in the U.S. However, the existence of Complainant’s Latin American registrations clearly establishes that Complainant possesses rights in the EUROCHANNEL mark. This is all that the Policy requires. See, e.g., Uniroyal Engineered Products Inc. v. Nauga Network Services, WIPO Case No. D2000-0503 (if complainant owns a registered mark, it satisfies the threshold requirement of having rights in the mark. The location of the registered mark is irrelevant when finding rights in a mark).

B. Rights or Legitimate Interests

The Panel further concludes that Papete.com does not have rights or legitimate interests in the domain name. Many of Respondent’s arguments on this issue are based on its argument that EUROCHANNEL is not protectable. (“It is well established that domain names containing common dictionary words, may be registered in good faith and, per se, establish the Respondent’s legitimate interest”). In view of the Panel’s finding that Complainant has rights in the EUROCHANNEL mark, such arguments are of no avail.

The evidence reveals that Respondent’s <eurochannel.com> web site provides click-through access to many other sites, including sites related to travel, leisure, gambling, music and sex. It also includes links related to “Euro” and to “Chanel,” as opposed to “Channel.” The “Chanel” link takes the user to information regarding CHANEL brand products. Although click-through web pages or the sale of domain names consisting of unprotected common or generic words, standing alone, may be a legitimate offering of goods and services, the Panel concludes that, in the circumstances of this case, such use may not be considered “bona fide” within the meaning of the Policy. See, e.g., Universal City Studios v. G.A.B. Enters, WIPO Case No. D2000-0416 (no bona fide use of “field of dreams” to sell baseball memorabilia when use would cause confusion with complainant’s FIELD OF DREAMS mark); Council of Better Business Bureaus, Inc. v. Haynes, WIPO Case No. DBIZ2002-00079 (desire to use a short, memorable domain name is not a legitimate reason to use domain name featuring another’s famous mark). The evidence clearly indicates that not only is the disputed domain name identical to Complainant’s mark but that Respondent Papete.com also was aware of Complainant and of the EUROCHANNEL mark at the time it acquired the domain name. The knowing diversion, for commercial gain, of traffic intended for the trademark holder deprives Respondent’s use of the domain name of any rightful or legitimate character.⁴ See World Savings Bank, FSB and Golden West Financial Corporaton v. Netcorp NAF Case No. FA0502000414921 (March 24, 2005).

C. Registered and Used in Bad Faith

The Panel finds that domain name was registered and is being used in bad faith. In particular, the Panel concludes that Respondent, by using the domain name, is intentionally attempting to attract, for commercial gain, internet users to its site by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of such site. The Panel finds that Respondent Papete.com⁵, based in Panama, knew of Complainant and of the EUROCHANNEL mark at the time it acquired the mark. The evidence also indicates that internet users, particularly those located in Latin America, are aware of Complainant and the services it offers under the EUROCHANNEL mark. Under such circumstances, it is reasonable to conclude that such purchasers, as a result of the use of the <eurochannel.com> domain name, are likely to believe that the <eurochannel.com> web site was sponsored by or affiliated with Complainant.

D. Reverse Domain Name Hijacking

In view of the above, the Panel finds no basis to determine that Complainant used the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name

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 <eurochannel.com> be transferred to the Complainant.

Jeffrey M. Samuels
Presiding Panelist

Richard G. Lyon
Panelist

Alan L. Limbury
Panelist

Date: June 2, 2005

¹ The registrations were initially issued to TVA Channels LTDA and were later assigned to MultiThematiques, Inc. Through a change of name, Multithematiques is now known as Eurochannel, Inc.

² All references in the Complaint to “Respondent” refer to the former owner of the domain name registration, Mrs. Jello, LLC.

³ In his declaration, Papete.com’s general legal counsel asserts that the disputed domain name is worth between $25,000 and $40,000.

⁴ Because the Panel finds that Papete.com was aware of Complainant’s mark, it need not decide the issues of the extent to which a reseller may close its eyes to registered marks of others or the obligation of a domain name registrant to investigate whether the name it seeks to register incorporates the mark of another.

⁵ Registration in bad faith must occur at the time the current registrant took possession of the domain name. See, e.g., Substance Abuse Management, Inc. v. Screen Actors Modesl [sic] International, Inc., WIPO Case No. D2001-0782.