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Diknah, S.L. v. WebQuest.com Inc. [2005] GENDND 1436 (25 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Diknah, S.L. v. WebQuest.com Inc.

Case No. D2005-0573

1. The Parties

The Complainant is Diknah, S.L., Palau Solitą i Plegamans, Spain, represented by Jaume Passarell Beya, Spain.

The Respondent is WebQuest.com Inc., Modesto, California, United States of America, represented by David M. Dingeman, Esq., United States of America.

2. The Domain Name and Registrar

The disputed domain name <mng.com> is registered with Moniker Online Services, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 1, 2005. On June 3, 2005, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On June 3, 2005, Moniker Online Services, LLC 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 14, 2005. The Center verified that the Complaint together with the amendment to 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 June 15, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was July 5, 2005. The Response was filed with the Center on July 5, 2005.

The Center appointed Peter G. Nitter as the sole panelist in this matter on July 14, 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, paragraph 7.

4. Factual Background

Complainant is Diknah S.L., a Spanish company incorporated in 1989. Complainant does business in many fields, including in the fashion business. Complainant owns the following MNG marks registered in Spain:

No. 1957259 for Class 16;

No. 1957260 for Class 25;

No. 2399096 for Class 03;

No. 2399097 for Class 09;

No. 2399098 for Class 14;

No. 2399099 for Class 16;

No. 2232518 for Class 35;

No. 2101776 for Class 39.

The first MNG mark registered by Complainant was granted by the Spanish Patent and Trademark Office on December 5, 1995. Complainant has also registered the MNG mark in other countries in the world through its wholly owned subsidiary Consolidated Artists B.V. This subsidiary owns more than 100 MNG registered marks including international mark No. 801.050 registered January 7, 2003.

The Complainant is the owner of the domain names <mng.es> and <mng.com.es>. The Complainant also owns, through its subsidiary Consolidated Artists B.V. and its licensee Punto FA S.L., <mngbymango.com>, <mngbcn.com>, <mngbarcelona.com>, <mngmango.com>, <mngshop.com> and <mangomng.com>.

Complainant’s licensee, Punto FA S.L., has 750 stores spread across 75 countries worldwide.

5. Parties’ Contentions

A. Complainant

The Complaint could be based on any of Complainant’s MNG marks. The letters MNG are the basic component of the marks and they are used to identify the products marketed by Complainant’s licensee. The domain name at issue is made up of exactly the same letters MNG. This similarity is likely to lead to confusion in consumers’ minds regarding the origin of the products identified with this mark.

Complainant claims that the MNG mark is recognized internationally, and has, in addition to copies of trademark certifications, presented press articles, catalogues and magazines, which show Complainant’s use of the MNG mark.

The Respondent has no rights or legitimate interests in the domain name. The website, which the domain name leads to, contains a search engine that provides access to other portals on the Internet.

The Respondent is not known under the name <mng.com> but under the domain name <webquest.com>, which is the same as Respondent’s company name. Respondent’s website, “www.webquest.com” has similar content as the “www.mng.com” website. No products or services identified with the MNG sign are mentioned on any of these websites.

Respondent does not make a legitimate, loyal use of the domain name. Respondent’s intention is to misleadingly divert consumers by taking advantage of the reputation of the MNG mark and the image of the products marketed by Complainant’s licensee.

Respondent has registered the domain name at issue for the purpose of selling it to the owner of the MNG mark at a value that greatly exceeds the registration costs. When Complainant contacted Respondent, requesting that the domain name be transferred to Complainant, the Respondent stated in an email that the domain name could be sold for 75.000 USD.

The content on the website of the domain name at issue was initially written in English, but after Respondent was contacted by Complainant the language was changed to Spanish. This was, according to the Complainant, done to attract the Spanish public, which is highly aware of the MNG brand and its reputation. The Respondent is attempting to create a possibility of confusion with Complainant’s mark in order to promote its own website and thus receive a higher number of visitors than it would normally have.

B. Respondent

Respondent is a business providing search engines pertinent to generic 3-letter domain names.

Respondent has legitimate common-law service mark rights for <mng.com> in international class 42 for “Providing specific information as requested by customers via the Internet for customized searching in the field of personal finance, financial planning mortgages, tax preparation, student loans, real estate investing, stocks and bankruptcy”. Respondent has obtained these rights least as early as December 27, 2001.

The term “MNG” in English is a popular public file format for animated images. This is the most common usage of the term.

The term “MNG” is also known as a term for Miramar Mining CP, Mango, MNG Graphics and MNG airlines.

It is unclear how Complainant has rights in MNG.

The registrations of Complainant’s trademarks contain disclaimers, limitations and always include a logo or insignia.

Complainant’s application for the international trademark was dated after Respondent registered the domain name.

Complainant does not have any U.S. trademark registrations.

Complainant has not provided any evidence of actual or possible consumer confusion.

Respondent’s legitimate interest in the domain name is established per se at the point of registration.

Respondent was not aware of Complainant’s business or service mark.

Respondent never received constructive notice of a dispute through a cease and desist letter or otherwise.

Respondent never attempted to profit from Complainant’s alleged use of MNG, as it had never heard of Complainant.

Respondent is not in the business of selling domain names and never contacted the Complainant. It was Complainant who approached Respondent regarding the sale of the domain name.

Respondent never changed the language of the website. It was Yahoo, which translated the web pages based on the language set by the individual user’s browser. Respondent defines his web content as English at the first line and no Spanish words show up in the source.

The Respondent has stated in a conversation between the parties that the domain name was not for sale, and that Respondent has invested heavily in the generic search engine and that the price therefore would have to be between 50 and 75 thousand USD.

6. Discussion and Findings

A. Identical or Confusingly Similar

The disputed domain name is <mng.com>.

The Complainant is the owner of a large number of registered MNG marks in many different countries. Even if there are some limitations related to some of the marks there is no doubt that the 3-letter combination MNG is the dominant part of the marks, in which the Complainant clearly has rights.

The fact that the term MNG is also used in other circumstances, such as in the contexts of MNG Graphics and MNG airlines does not prevent the Complainant from claiming rights in the MNG marks.

Respondent emphasizes that Complainant’s international trademark application was dated after Respondent’s registration of the domain name at issue. This is of no relevance under the first element of the Policy. Under the first element, it is sufficient that the domain name at issue is identical or confusingly similar to a mark in which the Complainant has rights, see paragraph 4(a)(i) of the Policy.

Although more relevant under the second element of the Policy, the Respondent claims under the first element which deals with the Complainant’s trademark rights, that the Respondent has legitimate common-law service mark rights in <mng.com>. The reason for this seems to be the registration and use of the domain name at issue since December 27, 2001. The Panel does not find that Respondent has presented relevant evidence that would prove such common-law service mark rights in the domain name.

Respondent points out that Complainant has no U.S. trademark registrations and that Complainant has not provided any evidence of actual or possible consumer confusion. Under paragraph 4(a)(i) of the Policy, the Complainant is, however, not required to provide evidence of actual consumer confusion and ownership of U.S. trademarks.

The suffix “.com” does not distinguish the domain name at issue from Complainant’s mark.

The Panel finds that the domain name <mng.com> is identical to Complainant’s MNG mark.

B. Rights or Legitimate Interests

According to Complainant, the domain name <mng.com> is a search engine that provides access to other portals on the Internet which are grouped together according to different criteria, such as holidays, computers, electronics, etc. The other websites owned by Respondent, such as “www.webquest.com”, have a similar content, but none of the products and services identified with the MNG sign are mentioned on any of these websites. The Respondent is not known for the domain name <mng.com> but for the domain name <webquest.com>, which is the same as its company name, i.e. WEBQUEST.com.Inc.

The Respondent has not contested these statements, but has claimed that its legitimate interests in the domain name are established per se at the time of registration, and that the domain name was registered because it was an available 3-letter domain that Respondent believed no party had exclusive rights to. It seems that Respondent refers to some general rule, which establishes a right for anyone to register 3-letter combinations. However, such a rule does not exist, although it may be easier for a respondent to show a legitimate interest in such a 3-letter combination.

The Respondent has not argued that its use of the domain name <mng.com> constitutes use relevant to paragraph 4(c)(ii) of the Policy, and the Panel finds this question doubtful. Be that as it may, due to the Panel’s decision on the bad faith issue (see section C below), the Panel does not find it necessary to conclude under the second element of the Policy.

C. Registered and Used in Bad Faith

Complainant has claimed that its trademark MNG has an international reputation and is registered in various countries. This does not, however, prove actual knowledge of Complainant’s trademark on the side of Respondent when the domain name <mng.com> was registered. The reputation of Complainant’s MNG trademark, according to the information presented in this case, does not allow the Panel to conclude that Respondent was aware of Complainant’s trademark when registering the domain name. In this respect, it may be assumed that the letter combination “mng” may be used by some as an abbreviation, and that the degree of distinctiveness is small. Based on the above, the Panel can not conclude that Respondent had actual knowledge of the Complainant’s trademark when the Respondent registered the domain name.

On the contrary, it seems more likely that Respondent registered the domain name to redirect Internet traffic to its search engine, but without the intention to freeride on the goodwill created by Complainant in it trademarks. It may seem that Respondent’s intent is to register domain names as a way to redirect internet users to Respondent’s search engine, and the Response suggests that Respondent is no stranger to the fact that the short domain names registered by Respondent may be identical or confusingly similar to trademarks (see e.g. on page 3 of Response where Respondent states that “the term “MNG” is a known term for Miramar Mining CP, Mango (Respondent), MNG Graphics, and MNG airlines to name a few”). This Panel does not endorse the practice of registering domain names in order to redirect confused Internet users to a specific search tool. However, said practice does not as such warrant a finding of bad faith under the Policy. As stated in WIPO Case No. D2004-0748, Builder’s Best, Inc. v. Yoshiki Okad, in order to find bad faith, “there must be some evidence of knowledge that the Respondent knew the domain name was identical or similar to the Complainant’s mark, not just ‘someone’s’ mark”.

Accordingly, the Panel concludes that the domain name <mng.com> was not registered in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the request for a transfer of the domain name is denied.

Peter G. Nitter
Sole Panelist

Dated: August 25, 2005