WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fundación Santa María Ediciones SM v. Telecom Tech Corp.
Case No. D2008-0961
1. The Parties
The Complainant is Fundación Santa María Ediciones SM, Madrid, Spain, represented by Astrid Echart Orús, Spain.
The Respondent is Telecom Tech Corp., Panama City, Panama.
2. The Domain Name and Registrar
The disputed domain name <eso-sm.net> is registered with Name.net LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 25, 2008. On June 27, 2008, the Center transmitted by email to Name.net LLC a request for registrar verification in connection with the domain name at issue. On July 7, 2008, Name.net LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the 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 July 8, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 28, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 29, 2008.
The Center appointed James A. Barker as the sole panelist in this matter on August 6, 2008. 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 has marks registered in Spain for the stylized marks SM and E-ELE SM. The latter mark was registered in 1993. The former was registered in 2006.
The Complainant also provides evidence of having related marks for, among others, EDICIONES SM and FUNDACIÓN SM.
The Complainant also operates websites at “www.e-sm.net” and “www.es-sm.net”.
It is evident that the Complainant's trademarks derive from its business name: FUNDACIÓN SANTA MARÍA. The Complainant is a Spanish cultural foundation, which includes the publishing company Ediciones SM, set up according to the Spanish Law and registered in the Spanish Registry of Teaching Foundations. The Complainant is a leading publisher of school books.
As stated in the Complaint, in Spain ESO refers to compulsory secondary education.
The disputed domain name was registered in April 2008, as indicated by the ‘creation date' in the Whois record.
The Complainant provides evidence that, at June 24, 2008, the disputed domain name reverted to a website providing pornographic content. At the date of this decision the website had changed. It then reverted to a portal website, containing a miscellaneous list of links, including for example those titled “Tc3eso12”, Seminarios”, “Comunicaciones”, “Symptoms of Depression”, and a number of others under headings relating to “Popular Categories”.
5. Parties' Contentions
A. Complainant
The following is summarized from the Complaint.
The disputed domain is confusingly similar to the trademarks SM and E-ELE SM since it incorporates in the first case, the whole of the trademark SM and merely adds the word ESO; changing in the second case the word E-ELE for ESO.
The Respondent has no rights or legitimate interests in respect of the domain name. In particular there is no evidence of the Respondent's use of, or demonstrable preparations to, use the domain name or a name corresponding to the domain name in connection with a bona fide offering of good or services. The only thing Respondent offers through its domain name is a link to a pornographic website. The Respondent has never been commonly known in the normal course of business by the trademark, trade name or domain name “SM”. The Complainant has found nothing to indicate that the Respondent is making a legitimate non-commercial or fair use of the domain name.
The Complainant, in May, 2007, published a school book titled “Tecnologías II, ESO”, which included links to the page “www.e-sm.net”. One of those links was misprinted as “www.eso-sm.net/tc3eso12” instead of “www.e-sm.net/tc3eso12”. That the Respondent operates in bad faith is evidenced by its registration of the misprinted link and its redirection to a pornography website.
As the Panel stated in the case Motorola, Inc. v. NewGate Internet, Inc., WIPO Case No. D2000-0079: “while many adult sex sites are perfectly legal and constitute bona fide offerings of goods or services, the use of somebody else's trademark as a domain name (or even as a meta-tag) clearly does not constitute a bona fide offering of goods or services when the website owner has no registered or common law rights to the mark, since the only reason to use the trademark as a domain name or meta-tag is to attract customers who were not looking for an adult sex site, but were instead looking for the products or services associated with the trademark.”
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
These issues are discussed in turn as follows.
A. Identical or Confusingly Similar
It is clear that the Complainant has rights in a mark for the purposes of paragraph 4(a)(i) of the Policy. Most relevantly, the Complainant has trademarks for SM and E-ELE SM. The question is whether the disputed domain name is confusingly similar to those marks. If it is, the Complainant will have established the first element it is required to prove.
The disputed domain name is different from the letters that are included in the Complainant's mark in a number of ways. In relation to the Complainant's SM mark, the disputed domain name obviously includes the combination “eso” together with a hyphen. In relation to the Complainant's E-ELE SM mark, the combination “eso” and the hyphen, replaces the combination E-ELE.
The disputed domain name is also different as is does not (and it cannot) reproduce the stylistic elements of the Complainant's mark. In a general sense, the stylized nature of the Complainant's mark is significant to the character of that mark. However, in the context of proceedings under the Policy, whether a domain name is identical or confusingly similar to a mark is to be judged against the dominant textual elements of a complainant's mark. This approach is supported by a series of prior panel decisions. (See e.g. Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031, and the cases cited in that one. In that case, the panel noted that: “…graphic elements, such as the Sweeps design, not being reproducible in a domain name, need not be considered when assessing identity or confusing similarity.”) The nature of a stylized mark may be relevant to whether its textual components are sufficiently dominant. But this is something that can only be judged on a case by case basis – according to the nature of the mark in question.
In this case, it is clear that the terms SM and E-ELE SM are the dominant textual elements of the Complainant's marks. Those letters are not so stylized, or subordinate to the character of the marks, that they are incidental. The significant impression created by the marks relates to those combinations of letters.
Is the disputed domain name therefore confusingly similar to the combinations of letters that comprise the Complainant's marks? The Complainant claims that it is, since it incorporates the whole of its SM mark. But it is difficult to see that the letters SM are distinctively associated with the Complainant. The letters SM might have any number of associations that are not related to the Complainant. The Complainant did not provide substantial evidence of the reputation of its mark in Spain or elsewhere, such that it could be argued that the letters SM have a distinctive association with it in that jurisdiction. The Complainant's evidence was mainly comprised of copies of its trademark registrations, and printouts from its own website.
The Panel does however find that the disputed domain name is confusingly similar to the Complainant's SM mark. The following are the Panel's reasons for this conclusion.
It is significant that the disputed domain name contains both the elements ESO and SM. As noted by the Complainant, in Spain ESO refers to compulsory secondary education, which is a substantial focus of the Complainant's business. The Complainant uses its “SM” mark, and others, in connection with publishing for secondary education. As such, the use of the term “ESO” together with “SM” in the disputed domain name is clearly suggestive of the Complainant's business and, by association, its mark. At the least, this has the potential to create confusion in the minds of those Internet users who might be aware of the Complainant's business.
It is true that the terms ESO and SM, used separately, might have a range of connotations. However, when used together the terms suggest a connection with the Complainant's mark. As relevantly stated by the panel in Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Javier Llorens, WIPO Case No. D2000-1319: “The words…used together create a strong similarity and impression that could easily induce the general public into believing that the Domain Name, the Domain Name proprietor and any web site operated from the Domain Name are associated with the Complainant.”
Finally, although the Complainant did not provide substantial evidence of its reputation in Spain (or elsewhere) the Panel has accepted that it has such a reputation, at least in the relevant market. The Respondent provided no response to the Complainant's assertions that it has such a reputation.
Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from the failure of a party to comply with a provision or requirement of the Rules. By failing to submit a response, the Respondent has failed to comply with paragraph 5(a) of the Rules. The inference which the Panel has drawn from this failure is that the Respondent does not deny the allegations made in the Complaint.
The Panel still has the responsibility of determining whether the Complainant's allegations should be treated as fact, and the weight to be given to those facts for the purpose of this proceeding. (See e.g. LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084.) The Panel has found that the allegations made in the Complaint, as outlined above, are prima facie credible in the circumstances of this case. The Panel has therefore relevantly accepted them as facts.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Respondent gave no evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances that suggest it has a right or legitimate interest in the disputed domain name. There is nothing else in the circumstances of this case that suggests that the Respondent has such a right or legitimate interest.
The Panel therefore finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Under paragraph 4(b)(iv) of the Policy there is evidence of bad faith under paragraph 4(a)(iii) where the Respondent:
“by using the domain name, [has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent's] web site…”
It is central to such a finding of bad faith that a respondent knew of a complainant, and intended to take advantage of its mark, when it registered and then used the disputed domain name.
The evidence in this case suggests that the Respondent acted in bad faith, within the meaning of paragraph 4(b)(iv). As evidenced in the Complaint, in June 2008, the disputed domain name then reverted to a pornographic website. There was no evidence that the nature of such a website would have any connection with the nature of the disputed domain name. Rather, the disputed domain name contains two terms that, used in combination, are likely to create confusing similarity with the Complainant's mark. These circumstances suggest that the Respondent was using a combination of terms, with which it otherwise had no connection, to benefit from misleading Internet users who were otherwise searching for the Complainant. The Respondent's later conduct, in apparently changing the content of its website, does not affect this conclusion.
For these reasons, the Panel finds that the Respondent registered and has used the disputed domain name in bad faith, for the purpose of paragraph 4(a)(iii) 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, <eso-sm.net>, be transferred to the Complainant.
James A. Barker
Sole Panelist
Dated: August 25, 2008