|Respondent||20 Minutos en El Salvador|
|Date of Decision||17.11.2006|
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Schibsted ASA v. 20 Minutos en El Salvador
1. The Parties
The Complainant is Schibsted ASA, Oslo, Norway, represented by Wikborg, Rein&Co., Oslo, Norway.
The Respondent is 20 Minutos en El Salvador, Los Angeles, California, UnitedStatesofAmerica.
2. The Domain Names and Registrar
The disputed Domain Names are <20minutoscentroamerica.com>, <20minutoselsalvador.com> and <20minutosweb.com>. They are registered with Tucows Inc., Ontario, Canada.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the“Center”) by e-mail on September12,2006, and in hardcopy on September14,2006. On September14,2006, the Center transmitted a request for registrar verification to Tucows in connection with the domain name at issue. OnSeptember14,2006, Tucows Inc. transmitted to the Center its verification response confirming that the Respondent is listed as the registrant of the Domain Names and providing the contact details for the administrative, billing, and technical contact. Inresponse to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an Amendment to the Complaint on September18,2006, in which he submitted the correct details of the Registrar. TheCenter 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“SupplementalRules”).
In accordance with the Rules, paragraphs2(a) and 4(a), the Center formally notified the Respondent of the Complaint and the proceedings commenced on September19,2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October9,2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October11,2006.
The Center appointed Dr.AndreaJaeger-Lenz as the Sole Panelist in this matter on October23,2006. 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, paragraph7.
4. Factual Background
The following facts and statements have been established on the basis of the Complaint and the documents attached to the Complaint in accordance to paragraph3(b)(xv) of the Rules. The facts given by the Complainant were supported with relevant evidence. They have not been contested by the Respondent.
The Complainant is a Scandinavian media group which publishes a free newspaper with the name “20 MINUTEN”, “20 MINUTES” and “20 MINUTOS” respectively. The newspaper is published every weekday on paper and on the Internet by the Complainant through its subsidiaries. The business model is to generate income through sales of advertising. All paper and online editions are locally adapted in respect of the news articles, however as to the layout, including logos, articles and advertisement, all editions share a similar design. So far the newspaper is published in some European countries and in some countries of Central and South America.
In Switzerland, France and Spain both the paper format and the Internet format are distributed. The initial launch of the paper format took place in Zurich, Switzerland in1999. Today “20 MINUTEN” is the most read newspaper in Switzerland reaching approximately 800,000 readers daily by local editions for Zurich, Basel, Bern, Luzern and St. Gallen. In France “20 MINUTES” is the second largest newspaper with local editions for 8 cities. In Spain local editions of “20 MINUTOS” are published in the 14largest cities of the country reaching about 2,448,000 readers daily. In Switzerland, France and Spain also the Internet editions expanded rapidly.
On June1,2004, the Spanish online version of “20 MINUTOS” was established in Mexico, Peru, Ecuador, Venezuela, Guatemala and Bolivia. The online addresses refer to the term “20minutos” which is combined with the corresponding national top level domain or with the top level domain “.com” followed by the abbreviation for the national top level domain.
The Complainant claims that he, directly or indirectly through its affiliates, is the owner of the word and device trademark 20 MINUTES, which is registered world-wide in a number of different languages and variants, including 20 MINUTEN (German), 20MINUTOS (Spanish), 20 MINUTI (Italian) and 20 MINUT (Russian). The relevant device trademark consists of the words 20 MINUTEN, 20 MINUTOS, etc. in white writing on a blue background With the number “20” appearing in a digital style.
The trademark 20 MINUTOS is registered in a number of Spanish speaking countries, including:
- Spain: Registration No.2215829 (class 35), Registration No.2457035 (class 16), Registration No.2423734 (class 16), Registration No.2447774 (class 16), Registration No.2447773 (class 16), Registration No.2585050 (classes 16, 35, 38 and 41), Registration No.2585052 (classes 16, 35,38 and 41), Registration No.2585053 (classes 16, 35, 38 and 41)
- Brazil: Registration No.821689568 (class 16), Registration No.821689576 (class 35)
- Venezuela: Registration No.16042 (class 35)
- Chile: Registration No.577340 (class 16), Registration No.556414 (class 33) and
- Mexico: Registration No.620066 (class 16), Registration No.624912 (class 35).
Furthermore the Complainant, directly or indirectly through its affiliates, registered a number of domain names which contain the words “20 MINUTES”, “20 MINUTOS” etc. and similar abbreviations under a number of strategic and relevant country-code top-level domains and generic-level domains.
The trademarks and the domain names the Complainant refers to partly have not been registered in Complainant’s own name, but in the name of the Complainant’s affiliates, the 20 Min Holding AG, a limited liability company incorporated in Switzerland, and the Multiprensa y Mas S.L., a limited liability company incorporated in Spain. Theaffiliates provided the Complainant with two powers of attorney fully authorizing the Complainant to act on their behalf. In respect of the trademarks mentioned above, the Complainant at least is the owner of the trademarks for Mexico and Chile.
The disputed Domain Name <20minutoselsalvador.com> was registered on January14,2006, the disputed Domain Name <20minutoscentroamerica.com> was registered March22,2006, and the disputed Domain Name <20minutosweb.com> was registered on April2,2006.
The web address “www.20minutoselsalvador.com” directs the user to the domain <20minutosweb.com> which contains a website with news and advertisement. In the left corner of the top of the home page the words “20 MINUTOS” and “NOTICIAS” appear. The number “20” appears in a digital style and both the words “20 MINUTOS” and “NOTICIAS” appear in a white writing on a blue background. During the process of redirection to this website, a white and blue digital style logo appears counting up from 1 to 20. Beneath the counting numbers the words “minutos en Centro Amrica” appear. At the time the Complaint was filed the address “www.20minutoscentroamerica.com” directed the user to the same website. According to information received by the Panel in the case file, the Respondent was not using the Domain Name <20minutoscentroamerica.com>, from September19,2006, to the time that this decision was drafted.
5. Parties’ Contentions
The Complainant contends that for each of the disputed Domain Names the three requirements specified in paragraph4(a) of the Policy are satisfied. In particular the Complainant claims that:
(i) The Domain Names are identical to the trademarks in which he, the Complainant, has rights.
The Complainant claims that, apart from the addition of the geographical suffixes “elsalvador”, “centroamerica” and the suffix “web”, the disputed Domain Names are identical to his trademarks and domain names. Complainant contends that those suffixes do not provide any element of distinction In respect of the Domain Names <20minutoscentroamerica.com> and <20minutoselsalvador.com> he points out that there is an established and unambiguous legal practice both from the WIPO Center and from the national courts that a geographical suffix (or prefix) to a registered trademark is not considered sufficient to distinguish the name from the registered trademark. Inthis context Complainant explicitly makes reference to Sanofi-aventis, Aventis Pharmaceuticals Holdings Inc, and Aventis (Ireland) Ltd v. Skin Provement, WIPO Case No.D2006-0100 and to Amazon.com Inc. v. A.R. Information & Publication Co. Ltd, WIPO Case No.D2001-1392. In respect of the Domain Name <20minutosweb.com> the Complainant contends that it must be clear that the suffix “web” is not sufficient to distinguish the Domain Name from the registered trademark “20 MINUTOS”.
(ii) The Respondent has no rights or legitimate interest in respect of the Domain Names in dispute.
The Complainant argues that it is likely that the Respondent knew about the Complainant’s use of 20 MINUTOS. The Complainant points out that he, started registering 20 MINUTOS as a trademark in Mexico, Chile, Venezuela, Brazil and Spain in 1999, and that the various Latin-American online editions of 20 MINUTOS were already published on June1,2004, whereas the Respondent did not register the Domain Names before winter/spring 2006. Furthermore the Complainant asserts that there is no evidence of the Respondent's use of the Domain Names in connection with a bona fide offering of goods or services, that there is no evidence that the Respondent has been commonly known by the Domain Names, that the Respondent has acquired any trademark rights to the Domain Names or that the Respondent is making a legitimate non-commercial or fair use of the Domain Names. The Complainant contends that the Respondent has no connection or affiliation with the Complainant and that the Complainant, has neither directly nor through his affiliates consented to the Respondent’s use of the Domain Names or to the use of the trademarks.
(iii) The Domain Names were registered and are being used in bad faith.
The Complainant suggests that through the use of the disputed Domain Names the Respondent intentionally and for commercial gain attempts to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website and of the products and services on the Respondent’s website.
The Complainant suggests that the logo that appears during the redirection process from the address “www.20minutoselsalvador.com” to the website found under the addresses “www.20minutoscentroamerica.com” and “www.20minutosweb.com” is almost identical to his 20 MINUTOS trademark. He considers this to be an obvious infringement of his rights and contends that the imitation of his registered trademark adds up to the risk of confusion already created by the similarity of the Respondent’s Domain Names with his, the Complainant’s domain names and trademarks. Furthermore the Complainant asserts that not only is the business model of the Respondent is similar to his own, but that there also is a similarity in respect of the services and in respect of the design and the conception of his, the Complainant’s websites. The Complainant concludes that the Respondent must have been aware of his, the Complainant’s trademarks when registering the Domain Names, and that the Respondent is using the disputed Domain names to misleadingly divert consumers for commercial gain and to benefit from the Complainant’s goodwill. Furthermore the Complainant contends that there also is a clear and evident risk of confusion among the advertisers, who may have the false impression that they are actually advertising on one of the Complainant’s websites.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph4(a) of the Policy provides that the following facts must be established in order to grant the Complainant a remedy:
(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 main Name; and
(3) that the Domain Name has been registered and is being used in bad faith.
According to paragraph14(a) of the Rules, in case of failure of the Respondent to provide a response to the allegations of the Complainant, the Panel is directed to decide the administrative proceeding on the basis of the Complaint. According to paragraph14(b) of the Rules the Panel “shall draw such inferences therefrom as it considers appropriate” (also stated in Ermenegildo Zegna Corporation, Lanificio Ermenegildo Zegna & Figli S.p.A., Consitex S.A. and Ermenegildo Zegna Espaa S.A v. Ocxon Media S.A., WIPO Case No.D2001-0128; Tarjeta Naranja S.A. v. MrDominio.com and Alejandro San Jorge, WIPO Case No.D2001-0295).
A. Identical or Confusingly Similar
Paragraph4 (a)(i) of the Policy requires that the disputed domain name be identical or confusingly similar to a trademark or service mark “in which the Complainant has rights”. These words do not include that the Complainant must be the owner of the trademark. It has been accepted in several decisions that a company related as parent or subsidiary to the registered holder of a trademark may be considered to have rights in the mark if it has been proved that the subsidiary is fully owned by the parent company (see Miele, Inc. v. Absolute Air Cleaners and Purifiers, WIPO Case No.D2000-0756; Toyota Motor Sales U.S.A. Inc. v. J. Alexis Productions, WIPO Case No.D2003-0624; Spherion Corporation v. Peter Carrington, d/b/a Party Night Inc., WIPO Case No.D2003-1027). The Complainant has not submitted any evidence that his affiliates are fully owned by him. However, he established that he is the owner of the trademark 20 MINUTOS for Chile and Mexico and hence, that he has rights in those trademarks.
The term “20 MINUTOS” is the distinctive part of the Complainant’s word trademarks. Each of the disputed Domain Names contains the term “20 MINUTOS” in its first part. As for the second parts of the Domain Names, i.e. “elsalvador”, “centroamerica” and “web”, the Panel finds that merely terms lacking distinctive character were added. Hence the Panel finds that The disputed Domain Names and the Complainant’s trademarks are confusingly similar.
Both the suffix “elsalvador” and the suffix “centroamerica” are geographical indications. A domain name consisting of the Complainant’s trademark followed by a geographical indication has been held to be confusingly similar (for example Sanofi-aventis, Aventis Pharmaceuticals Holdings Inc, and Aventis (Ireland) Ltd v. Skin Provement, WIPO Case No.D2006-0100; Amazon.com Inc. v. A.R. Information & Publication Co. Ltd, WIPO Case No.D2001-1392; PepsiCo, Inc. v. Kieran McGarry, WIPO Case No.D2005-0629; C. &A. Veltins GmbH & Co. KG v. Heller Highwater Inc., WIPO Case No.D2004-0466). As to the suffix “web” it also is well established in the jurisprudence the Center that the mere addition of a generic term which does not does not contain any pejorative content or otherwise tends to suggest disassociation from the mark, does not suffice to distinguish the Domain Name from the trademark (Viacom International Inc. v. Frank F. Jackson and Nancy Miller, WIPO Case No.D2003-0755; Socit Air France v. RBlue, WIPO Case No.D2005-0290). ThePanel sees no reason to digress from these prevailing opinions.
Accordingly, the Panel finds that the Complainant has satisfied paragraph4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant asserts that neither he nor his affiliates have authorized, licensed or otherwise allowed the Respondent to make use of the trademark 20 MINUTOS. Thefurther allegations of the Complainant in respect of the absence of any rights or legitimate interests of the Respondent in the use of the Domain Names remained uncontested. The Respondent has not provided any evidence of circumstances of the type specified in paragraph4(c) of the Policy. Especially Respondent has not provided evidence that he has been commonly known by the Domain Names or by any name consisting of or incorporating the words “20 MINUTOS”. The fact that the Respondent has failed to file a Response can suggest that Respondent lacks rights or legitimate interests in the disputed Domain Names (see Mazda Motor of America, inc. and PB&J Automotive, inc. dba Tustin Mazda v. Janet Hansen, WIPO Case No.D2006-0766). Inthis case no other circumstances are apparent that would reflect any rights or legitimate interest of the Respondent. In these circumstances it is appropriate for the Panel to draw an adverse inference from the Respondent’s failure to reply to the Complaint (see Charles Jourdan Holding AG v. AAIM, WIPO Case No.D2000-0403).
Accordingly, the Panel finds that the Complainant has satisfied paragraph4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Considering whether the disputed Domain Names are used in bad faith, paragraph4(b) of the Policy enumerates several circumstances, that, if found by the Panel to be present, in particular but without limitation, shall be evidence of the registration and use of a Domain Name in bad faith. Paragraphof the Policy 4(b)(iv) states that evidence of registration and use in bad faith may be found, if the Respondent by using the Domain Name has intentionally attempted to attract, for commercial gain, Internet users to his website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his website or location or of a product or service on his website or location. The Panel is convinced that the Respondent was well aware of the Complainant’s trademarks and of the services offered under those trademarks. The Panel finds that not only the domain names of the Complainant and the Respondent are confusingly similar, but also that the business model, the layout and the content of the Respondent’s websites are highly similar to the Complainant’s websites. Hence the Panel is convinced that the Respondent intentionally imitated the trademark and the services offered by the Complainant and consequently, that Respondent intended to cause confusion with the Complainant’s trademark as to the source, affiliation and endorsement of Respondent websites and to divert users to his own websites.
Accordingly, the Panel finds that the Complainant has satisfied paragraph4(a)(iii) of the Policy.
For all the foregoing reasons, the Panel decides that the Domain Names at issue are confusingly similar with the Complainant’s trademark, that the Respondent has no rights or legitimate interests in respect of the Domain Names, and that the Domain Names have been registered and are being used in bad faith.
Accordingly, the Panel orders, pursuant to paragraph4(i) of the Policy and to paragraph15 of the Rules, that the Domain Names <20minutoscentroamerica.com>, <20minutoselsalvador.com> and <20minutosweb.com> be transferred to the Complainant.
Dr. Andrea Jaeger-Lenz