Monografías.com S.A., Fernando Julián Negro v. Nick Lozikov / Moniker Privacy Services
Case No. D2008-0140
1. The Parties
The Complainants are Monografías.com S.A., Montevideo, Uruguay, and Fernando Julián Negro, Buenos Aires, Argentina.
The Respondent is Nick Lozikov/ Moniker Privacy Services, Minsk, Belarus.
2. The Domain Name and Registrar
The disputed domain name <monografías.com> (xn-monografas-r8a.com) is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 29, 2008, identifying Moniker Privacy Services as Respondent. On January 31, 2008, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On February 4, 2008, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that Respondent Nick Lozikov is listed as the registrant and providing the contact details. Complainant filed an amendment to the Complaint on February 13, 2008, adding Nick Lozikov as a Respondent. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced February 15, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response March 6, 2008. The Response was filed with the Center March 6, 2008.
The Center appointed M. Scott Donahey, David J.A. Cairns and Geert Glas as panelists in this matter on March 20, 2008. The Panel finds that it was properly constituted. Each member of 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.
On March 28, 2008, the Panel issued its Procedural Order No. 1 regarding the Language of the Proceeding, as set out following:
Procedural Order No. 1 – Language of the Proceedings
The complaint in this matter was submitted in the Spanish language. The response in this matter was submitted in the English language. The registration agreement is in the English language. The Uniform Domain Name Dispute Resolution Procedure Rules (the “Rules”), Rule 11 deals with the language of the proceeding and provides as follows:
(a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
(b) The Panel may order that any documents submitted in languages other than the language of the administrative proceeding be accompanied by a translation in whole or in part into the language of the administrative proceeding.
The relevant circumstances of the proceeding are as follows. The registration agreement is in the English language. Complainant’s primary language is Spanish. Respondent’s primary languages are English and Russian. The web site to which the domain name at issue resolves contains information exclusively in the Spanish language. Complainant has attached annexes in English and Spanish. Respondent has attached annexes in English and Spanish. Both parties have requested translations into the primary language of the respective parties.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions addresses the issue of the language of the proceedings in Section 4.3. The general consensus of panelists is that the language of the proceeding is the language of the registration agreement. A noted exception to the general rule is where the Respondent is fluent in the language in which the complaint has been submitted, and the complainant would be disadvantaged by having to translate. After careful consideration, the Panel believes that the circumstances of this administrative proceeding suggest another approach, one that is fairer, or at least less unfair, to both parties.
Because the language of the registration is English and the language of the web site is Spanish, the Panel believes that there should be two official languages of the proceedings, English and Spanish. In furtherance of this determination, the Panel rules as follows concerning the translation of pleadings and annexes:
Within fourteen days of receipt of this Procedural Order No. 1:
1. Each party must translate its pleading;
2. Complainant is only required to translate its annexes in the Spanish language into English, and Respondent is only required to translate its annexes in the English language into Spanish.
3. The parties are only required to translate annexes relied upon in their pleadings as evidence of matters set forth in paragraph 4(a) of the Policy. In other words formal documents (such as the registration agreement, powers of attorney, and the like) need not be translated.
M. Scott Donahey for the unanimous Panel”
Respondent objected to having to respond to the Complaint filed in the Spanish language and requested the opportunity to respond to the English translation when received. Complainant submitted an unsolicited additional filing for the Panel’s consideration. After due consideration the Panel issued the following order:
“The Panel has informed the Center that it will not accept the Complainant’s Supplemental Filing (submitted April 8, 2008).
The Panel grants the Respondent’s request for permission to respond to the English-language translation of the Complaint by way of amendment or supplement to its Response. The Panel requires that any such amendment or supplement to the Response submitted by the Respondent shall be submitted in both English and Spanish and must be received by the Center by April 28, 2008.
In light of these determinations, the Panel extended the deadline for issuing its decision to May 12, 2008.”
On May 13, 2008, the Panel issued the following Administrative Panel Order:
“The Panel request the submissions from the parties:
The Panel requests that Claimants produce evidence of their partnership in connection with the operation of the web site.
The Panel requests that Respondent produce evidence of the ownership of the domain names listed in the Response as owned by Respondent.
The Panel requests that such evidence be produced within 10 days and a decision will issue within seven days following receipt of such evidence.”
The Panel received all of the evidence requested on May 20, 2008.
4. Factual Background
Complainant Monografias.com S.A., a company organized under the laws of Uruguay, is the operator of the web site to which the domain name <monografias.com>, registered on June 21, 1998, resolves. Complaint, Annex 2 and Supplemental Annex. The web site is in the Spanish language. Complainant Fernando Julian Negro is a shareholder of Monografias.com, S.A. and is the owner of the registered mark MONOGRAFIAS.COM, registered with the Argentine Patent Office. The trademark application was filed on April 17, 2001, and the registration became effective October 24, 2002. The mark is a word and design mark which includes a drawing of a sheaf of papers imprinted on the exposed cover page with the letter, “m”. Complainant was only required to renounce its rights in the term “.com” standing alone. Complaint, Annex 3. Complainant Monografias.com S.A. is the owner of the mark MONOGRAFIAS.COM registered with the Unites States Patent & Trademark Office (“USPTO”). The mark is identical to that registered in Argentina, and was applied for on September 26, 2003, and the registration issued on October 19, 2004. The mark is registered on the Principal Register of the USPTO. Complaint, Annex 8.
Complainant began using the mark on the web site to which Complainant’s <monografias.com> domain name resolved allegedly on June 21, 1998, but at least as early as the last quarter of 2001, as established by the Alexa rankings. Complaint, Annex 9. The web site offers free access to the public to writings in the Spanish language on various subject matters under a series of categories listed on the web site. Complaint, Annex 10. Each article identifies its author. The print out of the web site attached to the Complaint lists 37 categories and more than 36,000 articles. Complaint, Annex 10.
Complainant’s web site is interactive. Users send in their works by email, and they are formatted, categorized, and published on the web site by Complainant. Currently the web site has almost four million registered users, and it is ranked by Alexa as one of the most visited web sites in Colombia, Venezuela, Chile, Peru and Argentina. Complaint Annex 9. Annex 11 to the Complaint is a table of the number of visitors to the site and the number of printouts made of articles posted on the site. Complainant attaches printouts of other web sites and newspaper articles attesting to the popularity and fame of Complainant’s web site. Complaint, Annex 12. Complainant profits from its web site operations through advertising revenue derived from advertisements on the web site.
Respondent has effectively registered the domain name <monografías.com>, a domain name which includes the Spanish accent mark over the letter “i” in the word. While the current configuration of the Internet does not accommodate the use of other than ASCII characters, ICANN-accredited and VeriSign-certified registrars allow the registration of Internationalized Domain Names (“IDNs”) using-non-ASCII characters in the “.com” and “.net” gTLDs. Under this system, the IDN <monografías.com> is translated into Punycode, an ASCII-Compatible Encoding (“ACE”) designed for use with IDNs. Punycode transforms a Unicode string into a string of characters allowed in hostname labels (ASCII letters, digits, and hyphens) and back again.
When an IDN is typed into the address bar of an enabled browser1 (such as Microsoft Internet Explorer 7 or Firefox) or clicks an active link, the IDN is automatically converted to Punycode and the user is taken to the web site to which the domain name resolves. The translation is invisible to the user, save that the Punycode translation is shown in the resulting address bar of the web site to which one is taken. If one is using a non-enabled browser, one can achieve the same result if one knows the correct Punycode. The equivalent Punycode domain name to <mongrafías.com> is <xn--monografas-r8a.com>. Thus when a user employing a non-ASCII character keyboard enters an IDN in an enabled browser, he is taken not to the ASCII version of the IDN, but rather to the Punycode version. Thus, a user who enters the “www.monografías.com” in the address bar of an enabled browser is taken to “www.xn--monografas-r8a.com”, rather than to “www.monografias.com”.
Respondent, an English and Russian language speaker, purchased the domain name <monografías.com>on August 1, 2005 for the amount of USD 6,180. Response, Annex D. Respondent uses the domain name at issue, when entered into an enabled browser, to resolve to a web site in the Spanish language, the current version of which offers two categories of articles, with 33 articles in the Spanish language listed under the category of “Religion” and no articles listed under the category of “Historia”. See, e.g., Response, Annex G. All of the 33 articles posted are attributable to the author “Auto Mono”. Respondent asserts that the site is an “RSS aggregation site, which uses the method of ‘really simple syndication’ to collect and display selected articles on the topic of religion”.2 Respondent supports the site by the use of relevant Google Adsense ads.
When one enters “www.xn—monografas-r8a.com” into the Wayback Machine at “www.internetarchives.org”, one finds that archived pages of the web site show that the domain name at issue was used to resolve to a web site headed “monografías.com” at which links to various unrelated commercial enterprises were listed (see, e.g., pages archived on November 5, 2005, August 4, 2006, and January 11, 2007). See, generally, Response, Annex E. The Wayback Machine appears not to be enabled to handle IDNs directly.
Respondent has invested in the registration and use of various generic IDNs in several languages, with equivalent Punycode domain names. Response, Supplemental Annex.
5. Parties’ Contentions
A. Complainant
Complainant contends that the domain name at issue is confusingly similar, either in appearance or effect, to Complainant’s registered mark MONOGRAFIAS.COM, that Respondent has no rights or legitimate interests in respect of the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.
B. Respondent
Respondent contends that Complainant has no rights in the mark as it consists of a “complex graphical logo”, that Respondent has rights and legitimate interests in using the common Spanish term “monografias” and that Respondent has registered and used many other generic terms in IDNs in the “.com” gTLD, and that Respondent registered (purchased) the domain name at issue in good faith. Respondent alleges that he had no knowledge of Complainant’s trademark at the time he registered (purchased) the domain name at issue, but even had Respondent been aware of Complainant’s trademark at that time, Respondent would have had no reason to believe that the trademark gave rise to an interest in the common Spanish term “monografias”.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
(2) that the respondent has no rights or legitimate interests in respect of the domain name; and,
(3) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant has registered trademarks on the Principal Registers of the trademark authorities in Argentina and the United States of America for the mark MONOGRAFIAS.COM. While the mark includes design elements, neither country limited the scope of protection to the design only and neither required that Complainant renounce interests in the word mark other than as part of the design. It also must be noted that Complainant is not claiming trademark rights in the common Spanish word “monografias”, but rather in the mark MONOGRAFIAS.COM. Panels have regularly recognized rights in marks consisting of a common word and the “.com” suffix. See, Match.com L.P. v. Bill Zag and NWLAWS.ORG,
WIPO Case No. D2004-0230 and Match.com L.P. v. Amjad Kausar,
WIPO Case No. D2003-0510 (MATCH.COM mark); Amazon.com, Inc. v. Lorna Kang, a/k/a Yong Li, a/k/a Mahmoud Nadim, a/k/a the Data in Bulkregister.com’s WHOIS Database is p, a/k/a Amjad Kausar,
WIPO Case No. D2005-0635 and Amazon.com, Inc v. Oluseyi Ikhizamah,
WIPO Case No. D2002-1168 (AMAZON.COM mark). Accordingly the Panel finds that Complainant has rights in the MONOGRAFIAS.COM mark, that this is not a generic or descriptive mark, and that Respondent’s domain name <monografías.com> is confusingly similar to Complainant’s mark.
B. Rights or Legitimate Interests
Complainant has alleged that Respondent has no rights or legitimate interests in the domain name at issue and that Respondent does not have permission to use Complainant’s mark. Respondent is a financial services professional. Respondent contends that Complainant has registered a common word as a mark, and that no one can claim a monopoly in a common word. By late August 2007, more than two years after the purchase of the domain name at issue, Respondent ceased using the domain name as a parking site with links to unrelated commercial entities and used it for a site which featured articles in Spanish on the subject of religion. The authors of said articles are unclear.3
Complainant does not claim a mark for MONOGRAFIAS, but only for MONOGRAFIAS.COM. The mark was registered prior to the ability to utilize IDN domain names in the present system. See “http://en.wikipedia.org/wiki/Internationalized_domain_name”. Respondent registered the domain name at issue after that ability became available. There is no inherent right or legitimate interest in the use of the term “monografías.com” any more than there is an inherent right or legitimate interest in the use of the term “match.com” or “amazon.com”. Absent some showing that Respondent has a right or legitimate interest in respect of the term “monografías.com”, which showing was not made to the Panel’s satisfaction, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain name at issue.
C. Registered and Used in Bad Faith
On August 1, 2005, Respondent acquired the domain name at issue for the price of USD 6,180 from an unknown seller. Response, Exhibit D. For the purposes of the determination of registration in good faith, the Panel considers not the good faith of the original registrant of the disputed domain name, but Respondent’s good faith at the time of its acquisition: see The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services [23658] WIPO Case No. D2007-1438 (“The general rule established by panels is that a subsequent acquirer of a domain name is held to have ‘registered’ that domain name for purposes of the Policy as of the date of acquisition of the registration rights.”); HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager,
WIPO Case No. D2007-0062 (“[T]he transfer of a domain name to a third party does amount to a new registration, requiring the issue of bad faith registration to be determined at the time the current registrant took possession of the domain name.”).
At the time of Respondent’s purchase, Complainant had been using the domain name <monografias.com> and the mark MONOGRAFIAS.COM for more than seven years. Complainant had held a registration for the mark MONOGRAFIAS.COM in Argentina for almost five years. Complainant had held a registration for the mark MONOGRAFIAS.COM in the United States of America, a country in which Respondent was resident, for more than eight months.
It defies credulity that Respondent, a financial services professional resident in New York, would invest more than USD 6,000 in a domain name without first checking to see if someone had a registered mark in connection with the name being acquired. While he may not have been presumed to check the files around the world, it would have been very simple to check the USPTO trademark registration files online. Respondent would have this Panel believe that he did not do so. Even if Respondent believed that no one had the right to register the mark MONOGRAFIAS or MONOGRAFIAS.COM, the prudent course for any sophisticated investor is to check for pre-existing or competing rights. Respondent, a financial services professional who makes a practice of investing in descriptive (Respondent uses the term, “generic”) IDN equivalents, could reasonably be expected to perform sufficient due diligence so as to assure himself that his investment was not subject to ready challenge.
Moreover, the domain name at issue had been used as a parking site to generate revenue. After purchasing the domain name, Respondent continued to use the domain name at issue as a parking site for more than two years. Use of a confusingly similar domain name as a parking site has, in and of itself, been held to be evidence of bad faith registration and use. Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415.
Further confirmation of Respondent’s knowledge of and intention to target Complainant’s business is provided by the metatags used by Respondent in its website (extracted by the Panel from Google caché). A metatag is an HTML code that describes the content of the website, embedded in its header and often used by search engines to identify the content of that webpage. The keyword metatags for the disputed domain name were:
These keyword metatags include Complainant’s trademark and other non-accented spellings of monografia or monografias. In this case, the use of Complainant’s trademark (also its domain name) to attract Internet users to Respondent’s website is clear evidence of bad faith. In addition the metatags are all in the Spanish language and include descriptive terms relating to the content of Complainant’s, not Respondent’s, website.
Accordingly, the Panel finds that the domain name at issue has been registered and is being used in bad faith.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <monografías.com> (xn-monografas-r8a.com) be transferred to Complainant.
M. Scott Donahey Presiding Panelist
David J.A. Cairns Panelist
Geert Glas Panelist
Dated: May 28, 2008
1 An enabled browser will support IDNs in the following scripts: Latin, Greek, Cyrillic, Armenian, Hebrew, Arabic, Syriac, Thaana, Devanagari, Bengali, Gurmukhi, Oriya, Tamil, Telegu, Kannada, Malayalam, Sinhala, Thai, Lao, Tibetan, Myanmar, Georgian, Hangul, Ethiopic, Cherokee, Canadian-Aboriginal Syllabics, Ogham, Runic, Khmer, Mongolian, Han (Japanese, Chinese, Korean ideographs, Hiragana, Katakana, Bopomofo, and Yi).
2 RSS is an XML format designed for sharing web content. It is a popular method for regular sharing of web content and can be used for additional content distribution services. Once a user has created an RSS text file, it can be registered with aggregators and it allows other web sites to grab the user’s content and import it. Any time an RSS creator updates his RSS file, all the external sites which subscribe to that RSS feed will be automatically updated as well.
3 Respondent states that he acquired the domain name at issue after he acquired the Russian language equivalent of “monographs.com”. It is interesting to note that Respondent, a part time resident of Russia, has not used the Russian IDN to resolve to a web site featuring monographs in Russian.
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