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Radio Caracas Television, R.C.T.V. v. Julio Augusto López [2005] GENDND 37 (24 January 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Radio Caracas Television, R.C.T.V. v. Julio Augusto López

Case No. D2004-0985

1. The Parties

The Complainant is Radio Caracas Television, R.C.T.V., C.A., Caracas, Venezuela, represented by D’empaire Reyna Bermudez Abogados, Caracas, Venezuela.

The Respondent is Julio Augusto López, Caracas, Venezuela.

2. The Domain Name and Registrar

The disputed domain name <caracastv.net> is registered with Melbourne IT Ltd. trading as Internet Name Worldwide.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 24, 2004. On November 26, 2004, the Center transmitted by email to Melbourne IT Ltd. a request for registrar verification in connection with the domain name at issue. On November 29, 2004, Melbourne IT Ltd. trading as Internet Name Worldwide transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing its contact details. 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 December 8, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was December 28, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 29, 2004.

The Center appointed Miguel B. O’Farrell as the sole panelist in this matter on January 10, 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

The Complainant is the owner in Venezuela of the following trademark registrations: “RADIO CARACAS T.V.” reg. no. 28556 for “Business or commercial establishment dedicated to broadcasting, television, theater and the activities related to this kind of commerce” in national class 50, granted on January 17, 1994; “RADIO CARACAS TELEVISION” reg. no. S018172 for “broadcasting and television” in international class 38, granted on November 19, 2001; “RADIO CARACAS TELEVISION” reg. no. S018171 for “broadcasting and television” in international class 38, granted on November 19, 2001; “RADIO CARACAS TELEVISION. CANAL 2.” reg. no. 146879 for “books and all kind of publications” in national class 38; “RADIO CARACAS TELEVISION CANAL 2” reg. no. 27687 for “Business or commercial establishment dedicated to broadcasting, television, theater and the activities related to this kind of commerce” in national class 50, granted on August 2, 1992 and “RADIO CARACAS” reg. no. 11209 for “Business or commercial establishment dedicated to broadcasting, radio and television” in national class 50, granted on May 24, 1974.

The Respondent registered the domain name <caracastv.net> on February 26, 2004.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that:

Radio Caracas Television, founded on November 15, 1953, is a well known business corporation engaged in commercial activities in connection with the television industry in Venezuela and abroad.

Mr. Julio Augusto López Enríquez, being fully aware of Complainant’s activities of over fifty (50) years and with no interest entitling him to do so, attempted to reproduce in bad faith Complainant’s trademarks in the domain name in dispute, to the point of creating confusion among consumers.

This situation was brought to Complainant’s attention by its clients themselves when they attempted to browse the Internet with the use of commercial search engines and by Complainant’s becoming aware of a supposed television channel called “Caracas TV” purportedly launched in Caracas, although it had never been authorized to operate or come on the air by telecommunications regulatory agencies.

The registration of the domain name by the Respondent is a violation of the exclusive rights granted to Complainant on its distinctive signs as enumerated under paragraph 4, above.

The domain name <caracastv.net> is confusingly similar to the trademarks registered by Complainant. The reproduction of exact words in the segments to be compared, “CARACAS” and “TV”, the sequence of the vowels, the length of the word, the number of syllables and the common endings are inductive of the confusion. Regarding phonetic similarities, the pronunciation of the domain name and the trademarks is alike. Lastly, they both evoke the same idea deriving from the same conceptual content of the signs. Additionally, the domain name in dispute, <caracastv.net>, adds no distinctive element that would allow it to be distinguished or differentiated from Complainant’s trademarks. The domain name in dispute does, in fact, completely incorporate the Complainant’s registered trademarks and only adds the extension .net.

There is a close relationship between the services provided by Respondent in its web page at “www.caracastv.net” and the registered trademarks:

(i) On the Front Page of the “www.caracastv.net” web page, at the top of the page, we see the terms “caracas”, “TV”, and “24 Horas de Noticias” (Round the Clock News);

(ii) At the top and on the bottom of the main page, there are seven (7) icons referring to information on User Registrations, Social, Government, Shows, Sports, Technology, and Current Events;

(iii) The company’s “Mission” is also identified and addresses: “television news of great interest, such as city traffic, municipal works of local governments, living together in the city, constructive criticism regarding the Mayor’s Office management, lack of safety, sports, arts, and shows, among others.” The site indicates that its Vision is: “to reach a legion of television viewers who wish to have objective, true, balanced, impartial, and alternate information without disregarding the current preponderance of political news.”

(iv) In the central portion of the page, there is a box named “Noticias del Día” (Today’s News) where the company appeared to be planning to publish last-minute news. All these informative elements found on the Front Page of the web page identified under the domain name in dispute, <caracastv.net>, leads one to believe that the services the company intends to provide are related to international class 38, particularly, telecommunications, television and radio broadcasting services, and information, among others. The services included on the Respondent’s web page are identical to the services registered by RCTV. Complainant does, in fact, possess trademark registrations for services related to telecommunications, and television and radio broadcasting services, among others. The similarity of the services provided by Complainant for the past fifty (50) years and the services purportedly listed on the Respondent’s web page, strengthen the the likelyhood of confusion among consumers.

The fact that other web pages include the term “caracas” does not mean that <caracastv.net> is not confusingly similar to Complainant’s trademarks, since there is no risk of confusion between the Complainant’s trademarks and other web pages including such term, because the origin of the services provided are clearly identified either by the geographical location for which the activity was conceived or because of the type of services.

In the case under analysis, the preponderant element of the trademarks is the term “caracas”. This geographic term, together with the other components of the domain name, is an indication for local and international consumers of the true and unequivocal business origin of the Radio Caracas Televisión television station.

The Respondent has no rights or legitimate interests in the disputed domain name. Respondent registered the domain name <caracastv.net> fully aware of the existence of the Complainant’s trademarks and services, thus certainly impairing Complainant’s rights.

In Venezuela, as in many other legal systems, launching a television channel implies complying with a number of State requisites and conditions; the most important of which refers to receiving permission by competent authorities in order to operate legally. According to Complainant’s full knowledge of the radio-electrical sector, there is, to date, no television operator under the name “Caracas TV”.

Likewise, it is juridically impossible for the Respondent to obtain registration of the term “CARACAS TV” from the Venezuelan Trademark Office (SAPI Servicio Autónomo de la Propiedad Intelectual) to distinguish services relative to international class 38. This rule expresses the fact that, where a trademark has already been registered by a person, a different person cannot, then, adopt (use, assume) or obtain any concessions on a mark that is identical or similar to the previously existing one inducing to error or confusion.

Given the inactivity of the web page identified under the domain name <caracastv.net>, it is difficult to believe that the Respondent has been able to make it known in any sector of the population.

The adoption of the term <caracastv.net> for the domain name in dispute does in itself represent illegitimate and disloyal use, as the Respondent did, in fact, register the domain name <caracastv.net> in an attempt to deviate consumers from Complainant’s web site and tarnish the good name of Complainant’s trademarks with clear intent to profit.

The Respondent has registered and used the domain name in bad faith. It is evident that there is bad faith in this case regarding registration, since the Respondent was aware of Complainant’s right in the trademarks at the time he registered the domain name <caracastv.net> and took advantage of such circumstance when he unduly took possession of the terms “Caracas” and “TV” in order to hamper Complainant’s access to the Internet. Likewise, when the Respondent applied for registration of the domain name <caracastv.net>, he was aware of the following facts: (i) prior knowledge of the existence of Complainant’s trademarks; and (ii) the intent to take advantage of the lack of registration of that term as a domain in order to benefit from it. Vidisco, S.L. v. Roberto Manso Esteban, WIPO Case No. D2001-0685. These conclusions stem from the following facts: Complainant is the holder of five Venezuelan certificates, duly registered by SAPI composed of the terms used integrally in the domain name in dispute. At the time the domain name <caracastv.net> was registered, the trademarks had acquired prestige (and continue to enjoy such prestige) in the television broadcasting sector which makes Complainant worthy of a right on the name as a “notorious trademark” with the capacity of keeping third parties from using that name without Complainant’s consent.

Likely, the Respondent has used the Domain Name in bad faith under “the inaction principles”. There is no evidence that the Respondent has made any effort to use in good faith the domain name <caracastv.net>. Panels in past UDRP cases have established that keeping a domain name that reproduces a well known mark inactive constitutes bad faith. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Respondent has taken advantage of the principal part of Complainant’s trademark to form a domain name <caracastv.net>. Complainant concludes that the principal motive of Respondent for doing so is to disrupt Complainant’s principal activities by trying to confuse people and bring them to Respondent’s site, thereby leading them into believing that the services offered come from Complainant and causing damage to Complainant’s reputation and the prestige of its trademarks.

All this evidence suggests that the <caracastv.net> domain name registration is not a coincidence since (i) the Respondent has no rights in the trademark and he has never been known by this name to promote his services and (ii) the Respondent is domiciled in Caracas, the same place were Complainant has acquired its notoriety. It has been considered that the registration of a well-known mark as a domain name constitutes bad faith. In relation with the bad faith, WIPO decision D2000-0239, J. García Carrión, S.A. v. Mª José Catalán Frías, has established that who registers a domain name in bad faith will use it in bad faith too.

Finally, the Complainant requests that the domain name <caracastv.net> be cancelled or be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

To qualify for cancellation or transfer, the Complainant must prove each element of paragraph 4(a) of the Policy, namely that:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

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

(iii) The disputed domain name has been registered and is being used in bad faith.

In accordance with paragraph 15(a) of the Rules, the Panel shall 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.

In accordance with paragraph 14(a) of the Rules, in the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint and (b) if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences there from as it considers appropriate.

In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.

In accordance with the above, in previous WIPO Cases in which the Respondent failed to file its response, the Panel’s decisions were based upon the Complainant’s assertions, and evidence as well as inferences drawn from the Respondent’s failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064. See also Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp., WIPO Case No. D2001-0936. The failure to dispute the allegations permits the inferences that the Complainant’s allegations are true.

Notwithstanding the above, the Panel must not decide in the Complainant’s favor solely on the basis of the Respondent’s default. See: Cortefiel S.A. v. Miguel García Quintas, WIPO Case No. D2000-0140. The Panel must decide whether the Complainant has introduced elements of proof which allow the Panel to presume that its allegations are true.

A. Identical or Confusingly Similar

The Panel considers that in order to correctly determine whether a trademark and a domain name are confusingly similar, the analysis should not only include their comparison from a graphic, oral and conceptual aspect, but should also take into consideration the special circumstances of the case.

The Complainant has proved that it is one of the most important broadcasting television companies in Venezuela. Founded in 1953, Complainant and its trademark registrations “RADIO CARACAS T.V.” reg. no. 28556 for “Business or commercial establishment dedicated to broadcasting, television, theater and the activities related to this kind of commerce” in national class 50, granted on January 17, 1994; “RADIO CARACAS TELEVISION” reg. no. S018172 for “broadcasting and television” in international class 38, granted on November 19, 2001; “RADIO CARACAS TELEVISION” reg. no. S018171 for “broadcasting and television” in international class 38, granted on November 19, 2001, have reached the status of notorious signs in Venezuela.

The Panel notes that Respondent, who is domiciled in Caracas, Venezuela, formed the domain name <caracastv.net> with two of the three elements which form the well-known trademark “RADIO CARACAS T.V.” It also notes that “CARACAS” and “TV”, are placed in the same order and that the domain name lacks additional elements which could contribute to distinguish it from the Complainant’s trademark with which it has a strong resemblance.

The Panel does not ignore the fact that the trademark registration “RADIO CARACAS TV” is formed with descriptive words and therefore each separate word should not be subject to exclusive appropriation. Therefore, the inclusion of the word “CARACAS” in the domain name as an indication of the geographical place where the business of the Respondent is placed may be justified.

Since the domain name <caracastv.net> leads to a site which is supposed to provide an “information” service rather than a “television” service, the abbreviation “tv” for “television” (in English and in Spanish included) is by no means necessary in the domain name, nor is it descriptive of an information service, but rather an arbitrary use of the abbreviation for a distinctive purpose.

In other words, the Respondent had no need to include “tv” in the domain name, and its inclusion brings the domain name unnecessarily close to Complainant’s trademarks.

Summing up, the inclusion of “tv” in the domain name <caracastv.net> certainly makes it confusingly similar to Complainant’s famous name and trademarks.

Consequently, the Complainant has proved the first element required in paragraph 4(a) of the Policy.

A. Rights or Legitimate Interests

The Panel understands that proving “a negative proposition can be particularly difficult” and agrees “that the burden on a Complainant regarding the second element is necessarily light, because the nature of the registrant’s rights or interests, if any, in the domain names lies most directly within the registrant’s knowledge” and that “once the Complainant makes a prima facie showing that the registrant does not have rights or legitimate interest in the domain name, the evidentiary burden shifts to the registrant to rebut the showing by providing evidence of its rights or interests in the domain name.” See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064.

Complainant has introduced some arguments in order to prove that the Respondent has no rights or legitimate interests in the disputed domain name, namely: the Respondent has not been known by the name “CARACAS TV”, it would be impossible for Respondent to register as a trademark the name “CARACAS TV” in Venezuela since it is confusingly similar to the Complainant’s trademarks; no television operator was found in Venezuela under the name “CARACAS TV”; the use of Respondent domain name is commercial, not fair and with the intention to misleadingly divert consumers to its web page.

On the other hand, Respondent failed to file a reply and therefore it did not bring to these proceedings any element to show that it has rights or legitimate interests in the disputed domain name.

In view of the above, and in accordance with the paragraphs 15(a), 14(a) and (b) and 10(d) of the Rules, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

Consequently, the Complainant has proved the second element required in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

In accordance with paragraph 4(b)(iv) of the Policy, the use of the domain name with the intention to attract for commercial gain Internet users to the web site by creating a likelihood of confusion with the Complainant’s mark shall constitute evidence of the registration and use in bad faith.

Respondent, who is domiciled in Caracas, Venezuela, registered the domain name on February 26, 2004.

Therefore, the Panel finds that the Respondent perfectly knew the well-known trademark registrations “RADIO CARACAS TV” and “RADIO CARACAS TELEVISION” when he registered the domain name.

As explained in point A.6. above, Respondent’s aim was to “to reach a legion of television viewers who wish to have objective, true, balanced, impartial, and alternate information without disregarding the current preponderance of political news”.

Therefore, it is quite evident that the Domain Name was chosen with the intention to attract the television audience to Respondent’s web site by creating a likelyhood of confusion with Complainant’s trademarks.

There are no indications that Respondent registered and uses the domain name for non-commercial purposes. On the contrary, Respondent’s website announces that soon it will provide links to the most outstanding news sites, which contributes to the idea that Respondent registered and uses the domain name for commercial purposes.

The fact that Respondent did not file a reply to the Complaint nor present any explanation that could justify its conduct reinforces the idea that Respondent registered and uses the domain name with the intention of attracting for commercial gain Internet users to the web site by creating a likelihood of confusion in users’ minds.

In view of the foregoing and in accordance with the paragraphs 15(a), 14(a) and (b) and 10(d) of the Rules, the Panel finds that Respondent has registered and used the domain name in bad faith.

Consequently, the Complainant has proved the third element required in paragraph 4(a) of the Policy.

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 <caracastv.net> be transferred to Complainant.

Miguel B. O’Farrell
Sole Panelist

Date: January 24, 2005