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RCA Trademark Management S.A. and Thomson v. RCA Television LLC [2005] GENDND 394 (10 May 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

RCA Trademark Management S.A. and Thomson v. RCA Television LLC

Case No. D2005-0024

1. The Parties

The Complainants are RCA Trademark Management S.A. and Thomson from Boulogne Billancourt, France, represented by MEYER & Partenaires from Strasbourg, France.

The Respondent is RCA Television LLC from Bucaramanga, Colombia, represented by Richard Alexander Camargo from Bucaramanga, Colombia.

2. The Domain Name and Registrar

The disputed domain name is <rcatelevision.com> (hereinafter, the Domain Name) and it is registered with eNom, Inc. (hereinafter, eNom).

3. Procedural History

The complaint (hereinafter, “the Complaint”) was filed by the Complainants with the WIPO Arbitration and Mediation Center (the “Center”) on January 7, 2005. On January 7, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On January 15, 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 (hereinafter, the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter, the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter, 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 proceeding commenced on January 20, 2005. In accordance with the Rules, paragraph 5(a), the due date for response was February 9, 2005. The response (hereinafter, the “Response”) was filed with the Center on February 16, 2005.

The Center appointed Mr. Albert Agustinoy Guilayn (hereinafter, the Panel) as the sole panelist in this matter on March 3, 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.

After reviewing the Response, which was written in Spanish, the Panel ordered the Respondent to file an English version, which was filed by the Respondent on March 22, 2005.

On March 29, 2005, the Panel issued a procedural order (hereinafter, “Procedural Order No. 1”), requesting additional information and documents from the Respondent. Such an order was partially amended and completed by another procedural order issued on March 30, 2005 (hereinafter, “Procedural Order No. 2”).

The Respondent filed its response to Procedural Order No. 2 on April 17, 2005. The Panel accepted the late filing in order to take into account the information provided by the Respondent, given its importance vis-à-vis the final decision in the proceeding. Moreover, the Respondent was required by the Panel to prepare an English version of its response, as the response to the order originally filed was written in Spanish. The English version of the response was filed later by the Respondent.

As a consequence of these delays, on April 21, 2005 the Panel issued a new procedural order (hereinafter, “Procedural Order No. 3”) granting the Complainants an additional term for filing their comments to the Respondent’s filing to Procedural Order No. 2. Such additional term expired on May, 3 2005, and it was aimed at offering the Complainant a term for providing comments in the same circumstances that those that had applied to the Respondent. The Complainants filed their comments on May 3, 2005.

4. Factual Background

A. The Complainants

Thomson is a French corporation that manufactures and distributes technology and service solutions for integrated media entertainment companies and consumers, providing end-to-end solutions to content creators, video network operators and manufacturers, retailers and consumer electronic products. In order to develop its activities, Thomson uses brands like Technicolor, Thomson, Grassvalley or RCA.

In 1987, Thomson purchased the RCA Group, a group of companies linked to Radio Corporation of America, a US company that pioneered the field of electronics, having developed its activities in the field of consumer electronics such as radios, phonograms, television, video cassettes recorders, etc. RCA Trademark Management, S.A. is a company which holds the intellectual property assets for RCA and it is fully owned by Thomson.

RCA Trademark Management, S.A. currently holds many trademark registrations based on the word “RCA”. Among others, the following trademarks may be cited:

- French nominative trademark “RCA”, trademark no. 1.436.146, registered on November 19, 1987 for products and services under classes 7, 9, 11, 16, 35, 38 and 41 of the International Nomenclator;

- US nominative trademark “RCA”, trademark no. 78065363, registered on May 23, 2001 for products under class 9 of the International Nomenclator.

Moreover, RCA Trademark Management, S.A. is the owner of “RCA” trademarks registered in many countries in Latin America (such as Argentina, Brazil, Chile, Costa Rica, Dominican Republic, Mexico, Panama, Uruguay, Venezuela and Colombia). In particular, RCA Trademark Management, S.A. also holds the “RCA” trademark in Colombia since 1994.

The Complainants have also registered the domain name <rca.com>, which is linked to a website that offers information on the range of products that are marketed by the Complainants under the brand “RCA”.

B. The Respondent

The Respondent is a Colombian commercial establishment (establecimiento comercial, a legal figure under Colombian that requires its registration before a Chamber of Commerce and has no legal entity) seated in the city of Bucaramanga and which is owned and managed by a Colombian citizen named Richard Camargo. According to the documentation provided by the Respondent, it was registered by Mr. Camargo on February 15, 2002, before the Chamber of Commerce of Bucaramanga. The name registered by Mr. Camargo was “RCA Televisión”. In indicated by the Respondent such a name was chosen as the letters “RCA” correspond to the initials of the name and surname of the Respondent, whose complete name is Richard Camargo Archila. In this regard, the Respondent has filed a copy of his Colombian identity card where the name “Richard Ceduar” and the surnames “Camargo Archila” are written. As a matter of fact, the original information contained in the Whois database indicates that the Domain Name is held by “RCA Television LLC”, even though the Respondent does not use this final acronym (“LLC”), as it is not used under Colombian law.

The word “televisión” was added to the name of the above-mentioned commercial establishment in order to identify the activities of the Respondent. Indeed, The Respondent focuses its activities in the field of the production of television programs which are further broadcasted by regional TV stations of Santander, the Colombian region where Bucaramanga is located. Moreover, the Respondent also produces and manages TV commercials for local stations.

The Respondent has been involved in this type of activities at least since 2002. In this regard, the Respondent has provided the Panel with a certificate dated April 1, 2005 and issued by Televisión Regional del Oriente T.R.O. Ltda. - Canal TRO (hereinafter, “Canal TRO”), a public TV station that broadcasts in the zone of Santander. According to such certificate, the Respondent produced several sport and entertainment programs for Canal TRO during the years 2002, 2003 and 2004, identifying in all of them the producer as “RCA Televisión”.

In addition to the above-mentioned certificate, the Respondent has provided the Panel with different recordings of its programs, where a logo with the words “RCA Televisión” appears both at the beginning and closing of the programs as well as in the set used in said programs.

C. The Domain Name

The Domain Name was registered on July 31, 2003 by the Respondent.

Since its registration, the Domain Name has been inactive for long periods, even though from September 2003 to September 2004, it was linked to a web page where an animation relating to the Respondent’s TV activities was displayed.

At the time the Complaint was filed, the Domain Name was inactive. Nevertheless, during this proceeding, the Respondent has activated it, linking it again to the above-mentioned web page containing the said animation.

5. Parties’ Contentions

A. Complainants

The Complainants contend in the Complaint that:

- The “RCA” trademarks have been extensively used by the Complainants for years in connection with the marketing of their technology products, including TV sets;

- The “RCA” trademarks have been registered and used for years by the Complainants in most of the countries of Latin America, including Colombia –where the Respondent resides-;

- The Domain Name is confusingly similar to the “RCA” trademarks in which the Complainants have rights at an international level, as the combination of the “RCA” trademark with the word “television” clearly relates to the Complainants;

- The Respondent should not be considered as having rights or legitimate interests in connection with the Domain Name as, to the Complainants’ best knowledge, the Respondent has never been commonly known under the wording “RCA Television LLC”, nor “RCA Television”, neither “RCA”. In this regard, the Complainants claim that no business is incorporated in Bucaramanga, Colombia, under the name “RCA Television”. Moreover, the Complainants indicate that the Respondent could not justify the combination of his initials included in the Domain Name;

- The Respondent registered the Domain Name in bad faith as the “RCA” trademarks have been extensively used, and are well-known in Colombia. Thus, the Respondent could not have registered the Domain Name without being clearly aware of the Complainants’ trademarks. Moreover, the Respondent provided false information when registering the Domain Name and did not reply to any of the letters sent by the Complainants;

- The Respondent has used the Domain Name in bad faith, as it is used for diverting Internet users to a website that links to other commercial websites, as consumers may be misled as no license or authorization had been obtained by the Respondent from the Complainants; and

- The Complainants sent two cease-and-desist letters to the Respondent via registered mail on November 5, 2004 and via e-mail on December 14, 2004, informing the Respondent about their rights over the Domain Name and demanding its transfer of ownership. The Respondent did not respond anyhow to any of these letters;

Additionally, the Complainants contend in their response to Procedural Order No. 3 that:

- They have been fortuitously able to find out that the domain name <rcatelevision.info> was also registered by the Respondent on September 29, 2004. Thus, they request the Panel to broaden the scope of this proceeding in order to include within it the said domain name;

- The Respondent has not proved the legal registration of any company named RCA Television LLC;

- The acronym corresponding to Mr. Camargo’s name and surnames is not “RCA” but should be “RCCA”, as his complete name is Richard Ceduar Camargo Archila”;

- The website of Canal TRO does not include any reference to the programs the Respondent alleges to have produced and that none of the evidence provided by the Respondent proves that it has actually used the name “RCA Televisión” for the development of its professional activities;

- The Respondent has not filed any document proving that it is legally entitled to broadcast programs by means of local TV stations;

- On September 2004, the Respondent used the Domain Name to offer it for sale, by by including text in this regard on the web page associated with the Domain Name.. Such a use is proved by the print-out of the historic content included in the Internet Archive (located at the following URL: http://web.archive.org/web/20001005101629/http://rcatelevision.com/); and

- The recent use of the Domain Name displays links to third parties’ websites, who are competitors of the the Complainants.

B. Respondent

The Respondent contends in the Response that:

- It is a commercial establishment constituted under the law of Colombia and has registered before the Chamber of Commerce of the city of Bucaramanga, Colombia, the identification of establishment (“matrícula de establecimiento”) “RCA Televisión” (registration no. 89079). The activities of the Respondent are focused on the production of programs and advertisements for its further broadcasting in local and regional television stations;

- It has registered the Domain Name to provide information mainly to the people of the region of Santander about the programs it produces and for developing quiz games and promotions –by using the e-mail address: <concurso@rcatelevision.com>-;

- The Domain Name was registered by Mr. Richard Camargo and has been inoperative most of the time. Nonetheless, during a period comprised between September 2003 and September 2004 the Domain Name included an animation relating to the Respondent’s activities. Such an animation has been reactivated during this proceeding;

- It never tried to create any kind of confusion with the Complainants’ trademark as the Respondent is not active in the markets where the Complainants develop their corporate activities;

- The Domain Name has been used by the Respondent in a period comprised between 2003 and 2004 and, thus, before receiving any notice of dispute from the Complainants. Moreover, the Respondent has been commonly known by the name “RCA Televisión”;

- The Domain Name has not been registered for the purpose of selling, renting or giving its registration but it was registered for the basic purpose of offering information on the Respondent’s productions through the Internet;

Additionally, the Respondent contends in its response to Procedural Order No. 2 that:

- There exist three channels of regional television that broadcast in the city of Bucaramanga and the Respondent has collaborated or collaborates with them, by recording, editing and providing to the said channels programs or commercials;

- It has produced an important number of programs, providing the Panel with several recordings of the said programs.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant must prove to the Panel the following three circumstances in order to obtain the transfer of the Domain Name:

(A) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(B) that the Respondent does not have any rights or legitimate interests in respect of the Domain Name; and

(C) that the Domain Name has been registered and is being used by the Respondent in bad faith.

Consequently, the Panel shall further analyze the eventual concurrence of the above-mentioned circumstances in the present case. Nonetheless, before proceeding to such an analysis, this Panel must examine the request of the Complainant to include within the scope of the present proceeding the domain name <rcatelevision.info>, which was also registered by the Respondent.

Before beginning the analysis of the application of the conditions foreseen by the Policy to the present proceeding, it is necessary to examine the request filed by the Complainants in their response to Procedural Order No. 3, demanding the broadening of this proceeding’s scope in order to include within its scope the domain name <rcatelevision.info>. As indicated above, this domain name was also registered by the Respondent on September 29, 2004 and it is currently linked to the web page that alsodisplays the Domain Name.

This Panel considers that the requested broadening of the scope of this procedure should not be granted, as it would suppose the modification of its essential elements. Indeed, the Complainant has introduced out of time a new scenario that would require the parties to provide additional relevant arguments on this new dispute. Such a factor would not only complicate this proceeding but it would also suppose a significant amount of supplemental time and efforts from all the involved parties. The opinion of this Panel is that the most appropriate framework for solving this new dispute would be a new proceeding, where each of the parties would be granted with reasonable and equitable conditions to properly file their arguments on the conflict at issue.

Consequently, this Panel shall not evaluate in this decision the registration and use by the Respondent of the domain name <rcatelevision.info>.

A. Identical or Confusingly Similar

According to the Policy, the first circumstance that must be proven by the Complainant is that the Domain Name may be considered as identical or confusingly similar to the Complainant’s trademarks.

A comparison of the Domain Name to the Complainants’ “RCA” trademarks shows two main differences among them:

- In first place, the Domain Name is composed of the combination of the words “RCA” and “Television”, while the Complainants’ trademarks are just composed by the word “RCA”; and

- In second place, the Domain Name does also include the “.com” suffix.

Further, these two differences shall be analyzed under the criteria set out by the Policy and the decisions that have been adopted under it.

The first difference between the Domain Name and the Complainants’ trademarks is that the first one is composed of the combination of the said trademark with the word “television”. In this case, such a combination creates a clear ambiguity, as some of the products manufactured and distributed under the RCA trademarks are TV sets and other complements to them. Therefore, this Panel considers that this ambiguity could lead Internet users to confusion, given the combination of the generic word “television” with the Complainants’ trademarks. This approach has been applied in many other decisions under the Policy where similar circumstances applied (see, for example, Harrods Limited v. Peter Pierre, WIPO Case No. D2001-0456;Playboy Enterprises International, Inc. v. Federico Concas, a.k.a. John Smith, a.k.a. Orf3vsa, WIPO Case No. D2001-0745; orDr. Ing. h. c. F. Porsche AG v. Vasily Terkin, WIPO Case No. D2003-0888).

The second difference among the Complainants’ trademarks and the Domain Name is the inclusion of the “.com” suffix in the latter. Such an inclusion is due to the current technical specificities of the Domain Name System (DNS). Therefore, said difference should not be taken into account in order to evaluate the identity or similarity between the Domain Name and the Complainant’s trademarks (see, for example, New York Life Insurance Company v. Arunesh C. Puthiyoth, WIPO Case No. D2000-0812; orA & F Trademark, Inc., Abercrombie & Fitch Stores, Inc., Abercrombie & Fitch Trading Co., Inc. v. Party Night, Inc., WIPO Case No. D2003-0172).

Therefore, the Panel considers that the Domain Name is confusingly similar to the “RCA” trademarks owned by the Complainants. Consequently, the condition set out by paragraph 4(a)(i) of the Policy has been met by the Complainants.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires the Complainants to prove that the Respondent has no rights or legitimate interests in respect of the Domain Name. In this regard, paragraph 4(c) of the Policy foresees a number of circumstances where the Respondent may be considered as holding said rights or interests. Those circumstances are:

- To have used the Domain Name or to have made demonstrable preparations for its use before any notice of the dispute in connection with a bona fide offering of goods and/or services; or

- To have been commonly known by the Domain Name, even when no trademark or service mark rights had been acquired; or

- To make a legitimate non-commercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

In the present case, the key issue is to find out if the Respondent may be considered as having fulfilled the second of the above-mentioned circumstances (i.e. that it has been commonly known by the Domain Name, even if no trademark has been acquired).

As stated in many precedent decisions under the Policy (see, for example, Avnet, Inc. v. Aviation Network, Inc., WIPO Case No. D2000-0046; Rogers Cable, Inc. v. Arran Lal, WIPO Case No. D2001-0201; orKiddopotamus & Company v. Kiddopotamus International, Inc., WIPO Case No. D2004-0403), in order to reach a conclusion In this regard, it is absolutely necessary to rely upon the evidence filed by the parties in the proceeding, as, under the Policy, the Rules and the Supplemental Rules, the Panel has rather limited powers of investigation on the corresponding factual grounds. Therefore, the analysis this Panel is going to apply will be focused towards whether the Respondent was commonly known by the name included in the Domain Name before the Complaint was notified to it.

In this regard, the Respondent has provided several documents that seem to confirm that it used the name “RCA Televisión” before receiving any notice from the Complainants or the Center.

Certainly, the following two documents are relevant for reaching such a conclusion:

- First of all, the Respondent has filed a copy of a document issued by the Chamber of Commerce of Bucaramanga, proving the registration on February 15, 2002 of the name “RCA Televisión” as an identification of establishment (“matrícula de establecimiento”). This registration was made by Mr. Richard Camargo Archila and, in accordance with the information included in the document, such name is intended to be used in connection with “programming and distribution of broadcasting productions”. As previously explained, this Panel considers that the Respondent has proved that it has made a coherent use of such an identification of establishment.

- Second of all, the Respondent has filed a certificate issued by the current director of Canal TRO, where it is expressly stated that the commercial establishment “RCA Televisión” has collaborated with that TV station during the years 2002, 2003 and 2004 in the production and broadcasting of at least three programs.

The Respondent has also provided this Panel with other evidences, which are basically recordings of some of the programs apparently produced by the Respondent. The Panel has verified that these programs are genuine and that have been broadcasted by Canal TRO. In all of them, a reference to “RCA Televisión” is made (whether at the beginning, during or at the end of the program) as the producer.

This Panel has also been able to find out that the Respondent uses on the Internet the name “RCA Televisión” in connection with its activities. Certainly, on the most visited website relating to the city of Bucaramanga (located at http://www.bucaramanga.com), the Respondent is listed as existing in the section corresponding to companies located at the said city (the corresponding reference is included in the URL: http://www.bucaramanga.com/emp.asp?snom=&sact=&spai=&page=38&order=Nom_Emp).

Taking into account the above-mentioned arguments, this Panel considers that the Respondent has provided reasonable elements in order to consider that it is a business that has been operated under the name “RCA Televisión” for years.

Nonetheless, this Panel would like to point out that it has reached this conclusion according to the powers of evaluation of evidence granted under the Policy and its complementary rules. Consequently, even though the evidence filed by the Respondent seems to be legitimate, it could only be considered as fully reliable if the Panel had been able to analyze it by means of instruments just courts may use.

Thus, any eventual dispute relating to the authenticity of the evidence filed by the parties under this type of procedure should finally be decided by a competent court. This opinion has been confirmed by many panels applying the Policy (see, for example, Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270; EAuto LLC v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047;EPlan, Software & Service GmbH & Co. K.G. v. Chad Folkening, Ecorp.com, Inc., E-Plan and E-Cast, WIPO Case No. D2000-0806; or Autobytel.com, Inc. v. Stancil Motors, WIPO Case No. D2001-0192).

In the same sense, having reviewed the Complainants’ filings, this Panel considers that they have not been able to outweigh the evidence filed by the Respondent. In this regard, the following issues must be taken into account:

- The Complainants have not provided in the complaint nor in their response to Procedural Order no. 3 any document that could convincingly contradict the evidence filed by the Respondent;

- The Complainants have not filed any evidence proving the notoriety of their “RCA” trademarks in Colombia. Consequently, this Panel has not been provided with elements strong enough to consider that the Respondent was aware of the said trademarks at the time it registered the Domain Name;

- This Panel considers that the inclusion of the acronym “LLP” beside the name “RCA Television” in the Whois database does not suppose, neither per se nor combined with the other circumstances applying to this case, a breach significant enough in order to conclude that the Respondent has not been known as “RCA Televisión”;

- The Complainants have claimed that the Respondent offered the Domain Name for sale. In order to sustain such an allegation they have filed the print-out of the historic content of the website linked at the Domain Name on September 2004, as included in the Internet Archive (located at the following URL: http://web.archive.org/web/20001005101629/http://rcatelevision.com/). Nevertheless, this Panel has been able to find out that such a print-out did not correspond to the website linked to the Domain Name on September 2004 but it was as it appeared on October 5, 2000. This is to say, the Complainants charge the Respondent with an unfair use of the Domain Name when it had not even registered the Domain Name.

Consequently, this Panel considers that the Complainants have not been able to offer evidence strong enough to contradict the Respondent’s proofs.

Having said all the above, this Panel wants also to emphasize that to have a “fair right” on the Domain Name, as foreseen in paragraph 4(c) of the Policy, does not automatically mean that such a right cannot be considered as infringing the Complainant’s rights, under the general rules of law that may apply. Indeed, said rules offer a range of criteria and instruments that clearly surpass those provided by the Policy and its supplemental rules.

Although this Panel is not a specialist in Colombian law, it considers that the Respondent’s registration of the name “RCA Televisión” as a Colombian identification of establishment (as well as the further registration and use of the Domain Name) could be considered as an infringement of the Complainants’ trademark rights or even as an unfair competition behavior. Nevertheless, such offenses clearly surpass the scope of the Policy and the powers granted to this Panel by the Policy, the Rules and the Supplemental Rules.

Certainly, the proceedings under the Policy were not intended to deal with trademark conflicts that go beyond mere cybersquatting. As previously stated, this Panel considers that the Respondent has successfully proved that it has used the name “RCA Televisión” before the proceeding was initiated. Nevertheless, this Panel is not able to assert that such a use did positively fulfill Colombian law. This is a task that belongs to Colombian courts and not to a Panel deciding under the Policy, as it has been indicated in numerous decisions under the Policy (see, for example, Comexpo Paris v. Visiotex, S.A., WIPO Case No. D2000-0792).

Taking into account the above-mentioned arguments, this Panel considers that the Complainants have not met the condition set out by Paragraph 4 (a) of the Policy.

C. Registered and Used in Bad Faith

As noted above, a complainant must establish each of the three elements outlined in Paragraph 4(a) of the Policy in order to prevail. In light of the conclusion that Complainants have not established the second element, it is not necessary to address the issue of bad faith.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Albert Agustinoy Guilayn
Sole Panelist

Date: May 10, 2005