toditoenlinea.com

WIPO Arbitration and Mediation Center

The Complainant is Todito.com, S.A. de C.V., with address at Insurgentes Sur 3579, Torre I I Piso 3, Col. Tlalpan La Joya, México, D.F., C.P. 14000, México. The Complainant is represented by John A. Thomas, Glast, Phillips & Murray, P.C., 13355 Noel Road, Suite 2200, Dallas, Texas 75140, United States of America.

The Respondent is José Guerra, Calzada del Valle No. 400 Ote. L-86, San Pedro Garza García, N.L., C.P. 66220, México.

The domain name at issue is <toditoenlinea.com>.

The Registrar is NameScout Corp., Whitepark House, White Park Road, Bridgetown, Barbados.

The WIPO Arbitration and Mediation Center (the "Center") received the Complaint on July 4, 2002, (hardcopy). The Center acknowledged receipt of the Complaint on July 5, 2002. On the same date the Center sent a Request for Registrar Verification to the Registrar of the disputed domain name. The Registrar submitted a response to the Center on July 5, 2002. It was confirmed that José Guerra is the Registrant as well as the administrative and technical contact for the domain name <toditoenlinea.com>. Full Whois contact details regarding the said domain name were provided by the Registrar.

On July 8, 2002, the Center transmitted a Complaint Deficiency Notification to Complainant, inviting Complainant to submit the Complaint in electronic format, pursuant to Paragraph 4(b) of the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and to include in the Complaint a submission to the jurisdiction of the courts in at least one specified Mutual Jurisdiction, as required by Rules, Paragraph 3(b)(xiii).

On July 9, 2002, Complainant provided the Center with a Complaint in electronic format and a submission to the courts where the principal office of the concerned Registrar is located, thereby curing the abovementioned deficiencies.

On July 15, 2002, pursuant to Paragraph 4(a) of the Rules and Paragraph 5 of the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy, (the Supplemental Rules), the Center notified Complainant its verification that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy, approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, (the Policy), the Rules and the Supplemental Rules; the Center also confirmed that payment was made by the Complainant. On the same date the Center notified the Respondent of the Complaint and that the formal date of the commencement of the administrative proceeding would be July 16, 2002, in accordance to the Rules, Paragraph 4 (c).

On July 16, 2002, according to Paragraph 2(a) of the Rules, the Center notified Respondent by courier (to the address provided by Respondent to Registrant and published on the Whois database) and e-mail (to the e-mail provided by Respondent to Registrant and published on the Whois database, i.e., <[email protected]> and the electronic address mandated by Paragraph 2(a)(ii)(B) of the Rules, i.e., <[email protected]>) of the commencement of this proceeding. On July 16 and July 21, 2002, the Center received messages indicating that the messages sent to <[email protected]> had suffered either "permanent fatal errors" or "transient non-fatal errors", and that therefore the e-mail could not be delivered. The e-mail notification sent to <[email protected]> was not returned or subject to an error message and the courier notification was not returned by the courier service. Therefore, this Administrative Panel assumes that these two notifications were delivered to the electronic and physical addresses provided by Respondent to Registrar. The Center did not receive a Response from Respondent within the term granted in accordance with Paragraph 5(a) of the Rules.

On August 7, 2002, the Center sent to the Respondent, via e-mail, a Notification of Respondent Default. No response has been received up to the date of drafting the decision.

On August 12, 2002, the Center notified the parties that an Administrative Panel ("the Panel"), consisting of a sole member panelist, i.e. Kiyoshi I. Tsuru, had been appointed and that the panelist had submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center.

On August 20, 2002, in accordance with Paragraph 12 of the Rules, the Panel issued Procedural Order No. 1, requiring Complainant to produce additional documents and/or statements regarding its claim of ownership to the trademarks TODITO.COM, TODITOENLINEA, TODITOCARD, TODITOILIMITADO, TODITO, along with documents and/or statements regarding Complainant’s claim to common-law rights to the mark TODITOENLINEA.COM, and documents/statements evidencing Respondent’s former business relationship with Complainant.

On August 21, 2002, the Center notified Procedural Order No. 1 to the parties. September 6, 2002, was the deadline indicated by the Center to comply with the said Order. The Projected Decision date is September 13, 2002. On September 5, 2002, Complainant submitted before the Center a Response to Procedural Order No. 1, attaching documents and statements in support of the assertions made in the Complaint. Complainant provided copies of the foregoing documents and statements to Respondent.

On September 9, 2002, the Center transmitted said Response to this Panel.

Pursuant to paragraph 10 (d) of the Rules stating that the Panel shall determine the admissibility, relevance, materiality and weight of the evidence, the appointed Panel has decided to consider all the documents submitted to the Center in the present case according to the above Procedural Order.

After reviewing the complete record relating to this proceeding, the Panel agrees with the Center in that the Complaint is now in compliance with the Policy, the Rules and the Supplemental Rules. The sole Panelist further finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules. The Panel also finds that the Center has employed "reasonably available means calculated to achieve actual notice to Respondent" of this proceeding. In accordance with paragraph 11 of the Rules, this proceeding has been conducted in English.

The Panel finds that the following facts appear from the Complaint and documents submitted with the Complaint and have not been disputed by the Respondent (seeRandstad General Partner (U.S.), LLC v. Domains For Sale For You, WIPO Case No. D2000-0051, March 24, 2000).

The Complainant is Todito.com, S.A. de C.V., (see supra point 1), a Mexican corporation, having its principal place of business in Mexico, D.F., Mexico. Complainant renders Internet content and connectivity services. Through its "portal" website addressed at "www.todito.com", Complainant is currently providing Spanish speakers in Mexico and the United States of America with the following services: presentation of news and entertainment, electronic mail, chat and bulletin board services, and hosting of business and home web pages. Complainant states that it registers more than three million average daily page views at its website, and that it has spent more than USD $12,000,000.00 in advertising this website since 1999.

Complainant is the owner of United States federal trademark registration, No. 2,554,685 "TODITO.COM" (Filed: October 13, 1999; granted: April 2, 2002). Complainant asserts that it began using the trademark TODITO.COM on August 15, 1999.

Complainant claims common-law rights to the trademark TODITOENLINEA, which Complainant asserts to have been using since May 15, 2000. Complainant represents that it has invested more than USD $ 2,000,000 in building and promoting the on-line services represented by TODITOENLINEA and that it has more than 10,000 subscribers to such services.

Complainant has provided evidence showing the existence of a former business relationship with Respondent. According to Complainant, Respondent was a customer of Complainant from March 1, 2000, to June 30, 2002.

The Respondent registered the domain name in question on April 27, 2002.

Complainant claims to be the owner of the trademarks TODITO.COM, TODITOENLINEA, TODITO CARD and TODITO ILIMITADO.

The Complaint is mainly based upon Complainant’s U.S. federal trademark registration No. 2,554,685 "TODITO.COM" (see supra point 4) and Complainant’s claim of common-law rights to the trademark TODITOENLINEA (Id.)

Complainant asserts that "the second-level domain name registered by Respondent is identical to Complainant’s mark TODITOENLINEA."

Complainant goes on by saying that "[t]he domain name registered by Respondent is confusingly similar to Complainant’s TODITO.COM mark, because it literally incorporates the distinctive portion of Complainant’s registered trademark; that is, TODITO." That "TODITO, meaning ‘a little bit of everything’ in English, is a fanciful play on words, suggestive of Complainant’s services, but not descriptive." That "[s]uch marks are deemed inherently distinctive and are entitled to protection without proof of acquired distinctiveness." That "[t]he likelihood of confusion is high where the portion common to both marks has inherent distinctiveness, but the additional portion is descriptive or generic" (TODITO being inherently distinctive, but ENLINEA being descriptive of on-line services).

Consumer alleges that there is a risk of association in the minds of consumers, because the domain name <toditoenlinea.com> necessarily refers to services delivered by means of the Internet, thus inducing the consuming public to believe that Respondent’s site was owned by, or sponsored by, the Complainant.

Complainant states that "Respondent has incorporated the distinctive portion of Complainant’s mark into a combination adding only the Spanish [term] for ‘on-line’ [i.e., en linea]"

Complainant declares that it "has not given Respondent any right to use the disputed domain name.", that Respondent was a customer of Complainant (see supra point 4) and that Respondent registered the disputed domain before terminating his relationship with Complainant (Id.). Complainant also declares that "Respondent obviously had actual knowledge of Complainant’s prior use of, and rights in, the TODITO.COM and the TODITOENLINEA marks"

Complainant further states that "Respondent’s domain name resolves to a "place-holder" page at the address of the Registrar, NameScout Corp." and that this constitutes evidence that "Respondent is not using the disputed domain name in any bona fide offering of goods or services."

Complainant also declares that to the best of his knowledge, "Respondent has never been known by the domain name, as an individual, business, or other organization"

Complainant states that "Respondent had actual notice of Complainant's use of, and rights in" the trademarks to which Complainant claims ownership, "both before and after his registration of the disputed domain name."

Complainant asserts that "Respondent could have searched the U.S. federal trademark registration database available on line at "http://www.uspto.gov/web/menu/tm.html", and found the TODITO.COM pending application and the ultimate registration." (See supra point 4).

Complainant argues that Respondent registered the disputed domain name for the purpose of selling it to Complainant for a sum in excess of out-of-pocket costs. Complainant alleges that its Director of Operations contacted Respondent by telephone and offered to pay Respondent his out-of-pocket costs, plus some advertising space on "www.todito.com" (which, according to Complainant had a fair-market value of approximately USD $ 20,000.00)

It is Complainant’s assertion that it is being damaged by "the existence of the disputed domain in Respondent's hands", due to the fact that "[c]ustomers unsure about a particular domain name would guess that the domain name was also the company's name or the name of a service of the company" [citing Panavision Int'l, L.P. v. Toeppen, 141 F.3d 1316, 1327 (9th Cir. 1998)].

Complainant’s final contention is that "registration of a domain name similar or identical to a highly distinctive mark is evidence of bad faith, because the distinctive nature of the mark reduces or eliminates any claim that the registrant's infringement was innocent." [Citing Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441, July 20, 2000].

The Respondent has not submitted a Response.

In accordance with the Uniform Domain Name Dispute Resolution Policy ("the Policy"), paragraph 4(a), the Complainant must prove that:

"(i) the domain name in question 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 domain name, and

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

In the administrative proceeding, the Complainant must prove that each three of these elements are present.

As the Respondent has failed to submit a response to the complaint, the Panel may accept as true all of the allegations of the complaint. Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk, WIPO Case No. D2002-0487, August 12, 2002; Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009, February 29, 2000.

Regarding Complainant’s assertion of ownership to the trademarks TODITO.COM, TODITOENLINEA, TODITO CARD and TODITO ILIMITADO, the Panel has found the following:

a) TODITO.COM. Complainant has provided sufficient evidence to support its assertion of ownership of an exclusive right to use this sign, namely, the existence of a federal U.S. trademark registration: Reg. No. 2,554,685 "TODITO.COM" (see supra points 4 & 5).

b) TODITOENLINEA. Complainant claims common-law rights to this mark. It supports its claim on the assertion that it has been making "long and extensive use prior to Respondent’s registration." In this respect, "[u]nder U.S. law, actual use of a designation as a mark creates rights and priority over junior users." United Artists Theatre Circuit, Inc. v. Domains for Sale Inc., WIPO Case No. D2002-0005, March 27, 2002, (citing J. Thomas McCarthy, McCarthy on Trademarks § 16.4 (2001). Complainant claims that this trademark has been in use since May 15, 2000, that it has invested more than USD $ 2,000,000.00 in building and promoting the on-line services represented by TODITOENLINEA and that such services have more than 10,000 subscribers. However, Complainant has not provided sufficient evidence to show that the trademark TODITOENLINEA has been actually used as a trademark in commerce, within the territory of the United States of America. Additionally, Complainant does not indicate whether any of the 10,000 subscribers of the services related to TODITOENLINEA are citizens and/or residents of the U.S. In other words, Complainant claims that it has used its trademark for more than two years and that it has invested considerable resources in building and promoting the services associated thereto, but it has not shown actual trademark use, i.e., "use in commerce" in U.S. territory, which is the relevant territory where common-law rights could be asserted in this case (there are no common-law trademark rights under Mexican law). In light of the above, this Panel concludes that it has not been provided with sufficient evidence to declare that Complainant has common-law rights to TODITOENLINEA.

c) TODITO CARD. Complainant has only provided as evidence of its ownership of this trademark, a copy of a Mexican trademark application. This copy is incomplete (for it only shows the front side of the document but not the back). According to Mexican Law, Applications do not grant applicants the exclusive right to use a trademark: "The industry, merchants and service providers may use marks in the industry, commerce and services that they offer/render. Nevertheless, the exclusive right to use [such marks] shall be obtained by means of registration thereof before the [Mexican] Institute [of Industrial Property.]" Article 87 of the Mexican Law of Industrial Property. This Panel thus finds that Complainant has not provided evidence showing its ownership of the trademark TODITO CARD.

d) TODITO ILIMITADO. Complainant has not provided any evidence that may lead this Panel to find ownership rights relating to this mark. Therefore, the Panel cannot rule that Complainant has any trademark rights in TODITO ILIMITADO.

The domain name <toditoenlinea.com> is confusingly similar to Complainant’s trademark TODITO.COM. The domain name incorporates the mark TODITO.COM which is a distinctive mark. The term "en linea", which literally means "on-line" added as a suffix, does not change the overall impression of the designation as being a domain name connected to the Complainant. The elimination of the space between the words "en" and "linea" is without legal significance. CBS Broadcasting Inc. v. Worldwide Webs, Inc., WIPO Case No. D2000-0834, September 4, 2000. The domain name has a strong likelihood with TODITO.COM.

The relevant consumer public, i.e., that conformed by North-American Spanish speakers is familiarized with the trademark TODITO.COM, for it is normally advertised on Mexican Television. There is reason to believe that the public, when reading or hearing the domain name <toditoenlinea.com>, will believe that the domain name is owned by, or related to, the Complainant. The result may therefore be that the disputed domain name would be associated in the minds of the consumers with Complainants’ trademark so that a risk of confusion is likely.

Numerous ICANN decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. See for example the following decisions: Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615, August 27, 2002; Compagnie Générale des Etablissement MICHELIN v. Lost in Space, SA, WIPO Case No. D2002-0504, August 1, 2002; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, November 6, 2001 ; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525, January 29, 2001; Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047, March 24, 2000; Toyota France and Toyota Motor Corporation v. Computer-Brain, WIPO Case No. D2002-0002, March 22, 2002, and Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd, WIPO Case No. D2000-0802, September 9, 2000.

More importantly, there is a series of cases involving distinctive marks plus the suffix "online" in which the corresponding Panels have found that the addition of the word(s) "online" grants no distinguishing attributes to the relevant domain name (e.g. Ontario Lottery and Gaming Corporation v. Paul Sweitzer, WIPO Case No. D2002-0602, August 7, 2002, (<casinoniagaraonline.com>); Calvin Klein Trademark Trust and Calvin Klein, Inc. v. Steven Heiberger and Legacy Development USA Corp., WIPO Case No. D2002-0336, June 28, 2002, (<calvinkleinonline.com>); Telstra Corporation Limited v. David John Singh, WIPO Case No. D2002-0260, May 28, 2002, (<telstraonline.com>); Dell Computer Corporation v. Parmi Phull, WIPO Case No. D2001-0285, April 11, 2001, (<dellonline.net> and <dellonline.org>)).

It is therefore the view of the Panel that the domain name <toditoenlinea.com> is confusingly similar to Complainant’s trademark TODITO.COM.

Complainant has provided evidence showing that Respondent was Complainant’s customer. Complainant has asserted that the aforementioned business relationship took place from March 1, 2000 to June 30, 2002, (see supra point 4.) Respondent registered the disputed domain name on April 27, 2002, i.e., some months before the declared date of termination of the relevant business relationship. Complainant assures that it has not given Respondent any right to use <toditoenlinea.com>. These facts lead the Panel to assume that Respondent had or should have had knowledge of the existence of Complainant’s business and trademark.

Paragraph 4(a)(ii) of the Policy establishes the following principles: "Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your 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 goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial 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."

On this regard, the Administrative Panel has confirmed Complainant’s assertion that <toditoenlinea.com> resolves to a "place-holder" page, which shows that Respondent has not used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Furthermore, Complainant states that "Respondent has never been known by the domain name, as an individual, business, or other organization."

Taking into account that Respondent has not disputed these assertions, and that he has not set forth any circumstance to demonstrate his rights in the contested domain name, the Panel finds that Respondent has no rights or legitimate interest in the domain name <toditoenlinea.com>, in accordance with paragraph 4(a)(ii) of the Policy.

Paragraph 4 (b) of the Policy establishes circumstances that, without limitation, constitute evidence of the registration and use of a domain name in bad faith:

"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location."

Based on the evidence submitted by Complainant, this Panel has found that Respondent had or should have had knowledge of the existence of Complainant’s business and trademark (see supra point 6 (ii)). Additionally, the Panel has found that Respondent has not used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, that Respondent has not been known by the domain name <toditoenlinea.com> and therefore that Respondent has no rights or legitimate interests in the said domain name (Id.).

Respondent registered a domain name that fully incorporates Complainant’s registered trademark. Considering that it is undisputed that such trademark is distinctive, it is difficult to infer that Respondent’s act of registration was a mere coincidence or a result of good faith (see supra point 5.A). Thus, this Panel is inclined to decide that the domain name <toditoenlinea.com> has been registered in bad faith.

It is the opinion of this Panel that the offer made by Complainant’s Officer to Respondent does not constitute evidence showing that Respondent registered the disputed domain name for the purpose of selling it to Complainant for a sum in excess of out-of-pocket costs.

Nevertheless, the fact that the disputed domain name does not resolve to any active website (but to a "place-holder" located in a site pertaining to the Registrar), leads the Panel to conclude that this is a case of passive holding.

According to Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, February 18, 2000, "the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. The distinction between undertaking a positive action in bad faith and acting in bad faith may seem a rather fine distinction, but it is an important one. The significance of the distinction is that the concept of a domain name ‘being used in bad faith’ is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith."

Many panels have recognized that the four factors set forth in paragraph 4 (b) of the Policy are nonexclusive, i.e., ‘without limitation’ (e.g. Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131, April 10, 2002; Expedia, Inc. v. Miles Pennella, WIPO Case No. D2001-1416, March 14, 2002), and "that other circumstances can be evidence that a domain name was registered and is being used in bad faith" (Telstrav. Nuclear Marshmallows).

In the present case, the Panel finds the following circumstances:

a) Complainant’s registered trademark TODITO.COM is distinctive (see supra point 5. A. See also Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441, July 20, 2000).

b) Complainant filed an application for registration of its trademark TODITO.COM on October 13, 1999. The United States Patent and Trademark Office granted the said trademark registration on April 2, 2002. The date of first use declared by Complainant is August 15, 1999. Respondent registered <toditoenlinea.com> on April 27, 2002. (See supra points 5.A & 6 (i)).

c) Respondent was Complainant’s customer at the time of registration of the disputed domain name (see supra point 5.A. & 6 (ii)).

d) There is no evidence of any actual or contemplated good faith use by Respondent of the disputed domain name.

e) Complainant’s services are rendered literally ‘on-line’, i.e., through the Internet. The existence of a domain name consisting of Complainant’s trademark TODITO.COM plus the suffix "enlinea" which is equivalent to "online" is a potential source for consumer confusion, because the consuming public would assume that an electronic address formed by the mark of Complainant plus a descriptive term used to designate the services rendered by Complainant would lead them to Complainant’s site. Any attempt made by Respondent to actively use the contested domain name would lead to a likelihood of confusion to the source, sponsorship, affiliation, or endorsement of Respondent’s potential web site among users of the Internet who would inevitably be led to believe that a site whose URL consisted of Complainant’s trademark plus the descriptive term ‘enlinea’ (meaning online) would be owned by, controlled by, established by or in some way associated with the Complainant.

f) the Respondent has failed to file a Response or make any attempt to traverse the claims and submissions made by the Complainant;

g) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, or an infringement of the Complainant’s rights under trademark law. (SeeGroup Plc v. Sonoma International LDC, supra point 6 (iii)).

In light of the above, the Administrative Panel is inclined to decide that Respondent’s passive holding amounts to bad faith use.

Based on the foregoing analysis, the Administrative Panel concludes that the Complainant has provided sufficiently evidence that Respondent’s registration and use of the domain name <toditoenlinea.com> are in bad faith.

According to Paragraphs 4(i) of the Policy and 15 of the Rules, this Administrative Panel decides that the Complainant has established that the domain name <toditoenlinea.com> is confusingly similar to a trademark in which Complainant has rights, that Respondent has no rights or legitimate interest in said domain name and that Respondent has registered and is using said domain name in bad faith.

This Administrative Panel therefore orders that the domain name <toditoenlinea.com > be transferred to the Complainant.

Kiyoshi I. Tsuru
Sole Panelist

Dated: September 13, 2002