M.T.C. Inc. v. Net L@tino, Inc.

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

M.T.C. Inc. v. Net L@tino, Inc.

Case No. D2002-0088

1. The Parties

The Complainant is M.T.C., Inc., a corporation organized in the State of Texas,

United States of America (USA), with place of business in San Antonio,

Texas, USA.

The Respondent is Net L@tino, Inc., with address in Falls Church, Virginia,

USA.

2. The Domain Name and Registrar

The disputed domain name is <mitierra.com>.

The registrar of the disputed domain name is Melbourne IT, Ltd., with business

address in Melbourne, Australia.

3. Procedural History

The essential procedural history of the administrative proceeding is as follows:

(a) The Complainant initiated the proceeding by the filing of a complaint via

e-mail received by the WIPO Arbitration and Mediation Center ("WIPO")

on January 29, 2002, and by courier mail received by WIPO on February 1, 2002.

Payment by Complainant of the requisite filing fees accompanied the courier

mailing. On February 4, 2002, WIPO transmitted a Request for Registrar Verification

to the registrar, Melbourne IT, Ltd. (with the Registrar’s Response received

by WIPO on February 5, 2002). Following notification of a technical filing deficiency,

Complainant filed an amendment to the Complaint via e-mail received on February

8, 2002, and courier mail received on February 12, 2002.

(b) On February 14, 2002, WIPO transmitted notification of the complaint and

commencement of the proceeding to Respondent via e-mail and registered mail.

(c) On March 6, 2002, Respondent’s response was received via e-mail by WIPO,

and on March 12, 2002, the response was received in hardcopy.

(d) On March 7, 2002, WIPO received a supplemental filing via e-mail from Complainant,

and on March 12, 2002, WIPO received that supplemental filing in hardcopy.

(d) On March 11, 2002, WIPO invited the undersigned to serve as panelist in

this administrative proceeding, subject to receipt of an executed Statement

of Acceptance and Declaration of Impartiality and Independence ("Statement

and Declaration"). On March 17, 2002, the undersigned transmitted via telefax

the executed Statement and Declaration to WIPO.

(e) On March 18, 2002, Complainant and Respondent were notified by WIPO of

the appointment of the undersigned sole panelist as the Administrative Panel

(the "Panel") in this matter. WIPO notified the Panel that, absent

exceptional circumstances, it would be required to forward its decision to WIPO

by April 1 2002. The Panel received a hard copy of the file in this

matter by courier from WIPO.

The Panel has not received any requests from Complainant or Respondent regarding

further submissions, waivers or extensions of deadlines, and the Panel has not

found it necessary to request any further information from the parties. The

proceedings have been conducted in English.

4. Factual Background

Complainant has registered the trademark and service mark "MI TIERRA"

on the Principal Register of the United States Patent and Trademark Office (USPTO)

(Reg. No. 2,150, 663, dated April 14, 1998, service mark in International Class

(IC) 42, covering event coordination and catering services, as further specified;

Reg. No. 2,127,453, dated January 16, 1998, trademark in IC 25, covering

clothing, as further specified; Reg. No. 2,154, 828, dated May 5, 1998, trademark

in IC 16, covering printed materials, namely souvenirs, menus, and calendars;

Reg. No. 1,403, 574, dated July 29, 1986, service mark in IC 42, covering

restaurant services). Complainant has also registered the mark "ASI ES

MI TIERRA" at the USPTO. The USPTO registrations indicate that the English

translation of "MI TIERRA" is "MY LAND" or "MY GROUND".

(Complaint, Annex 3).

Complainant indicates that it has used the "MI TIERRA" mark in commerce

since at least as early as 1952, and that this use has been in a number of states

in the United States (id., para. 12.3 & 12.4).

Complainant has registered the domain name <mitierracafe.com> and maintains

a commercial website at Internet address (URL) <www.mitierracafe.com>.

On such website, Complainant is described as "Café y Panederia",

and offers information about its restaurant menu, as well as the sale of articles

of clothing. (Response, Annex 3, and Panel visit of April 1, 2002).

According to the registrar’s verification response to WIPO, dated February

5, 2002, "Net L@tino, Inc." is the listed registrant of the domain

name <mitierra.com>. The Administrative Contact is "Registrador de

Dominios". The record of registration for the disputed domain name was

created on January 22, 1999.

Since its registration, the disputed domain name has been used to direct Internet

users to websites <www.punto.com> and <www.dietas.com>, the home

pages of which displayed designs and brief statements that have no apparent

commercial meaning (Complaint, para. 12.7 and Annexes 4 & 5). Subsequent

to the filing of the complaint in this matter, Respondent posted an "under

construction" web page at <www.mitierra.com> that includes the statement

"MiTierra.com is in no way associated with Mi Tierra Café To find

Mi Tierra Cafe, please visit: http://www.mitierracafe.com" (Response, Annex

4).

Respondent has submitted an alleged exchange of e-mail correspondence with

"Alejandro Rasic". In this correspondence, dated June and July 2000,

Alejandro Rasic expresses interest in purchasing the <mitierra.com> domain

name, and is advised by Respondent that,

"unfortunately the domain MiTierra.com is not for sale. We are thinking

about developing it but for different projects. We will not be able to do it

immediately. This is why we are looking for a portal or Web-site with Co-branding

opportunities for this domain. That was the main reason that we contacted you.

Unfortunately you do not offer any Co-branding opportunities. We are open to

explore different opportunities for this domain. If you have something in mind,

please do not doubt in contacting us." (Response, Annex 2, original in

Spanish, translation into English performed by web-based translator and provided

by Respondent. Panel confirms general accuracy of translation).

Respondent has provided evidence that a substantial number of domain names

using variations of "mi tierra" are available for registration in

different top level generic domains and country code domains, and that the domain

names <mitierra.net> and <mitierra.org> are registered to third

parties (Response, Annex 1).

Complainant states that it has attempted to contact Respondent without success

(Complaint, para. 12.8).

The Service Agreement in effect between Respondent and Melbourne IT, Inc.,

subjects Respondent to Melbourne IT, Inc.’s dispute settlement policy, the Uniform

Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999,

and with implementing documents approved by ICANN on October 24, 1999. The Uniform

Domain Name Dispute Resolution Policy (the "Policy") requires that

domain name registrants submit to a mandatory administrative proceeding conducted

by an approved dispute resolution service provider, of which WIPO is one, regarding

allegations of abusive domain name registration (Policy, para. 4(a)). Respondent

has not contested that it is properly before this Administrative Panel.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has rights in the trademark and service mark "MI

TIERRA" as evidence, inter alia, by its registration with the USPTO

(see Factual Background, supra). Complainant states that the disputed

domain is identical or confusingly similar to its mark.

Complainant indicates that Respondent has no rights or legitimate interests

in the disputed domain name. Complainant alleges that Respondent has not been

commonly known by the disputed domain name, that Respondent has made no use

of the name other than in connection with directing Internet users to "under

construction" content, and that Respondent has not been authorized by Complainant

to use its mark in the disputed domain name.

In its arguments concerning Respondent’s lack of rights or legitimate interests,

Complainant asserts that Respondent is using the disputed domain name to intentionally

attract Internet users to its website by creating confusion as to whether Complainant

sponsors or is associated with its website, for purposes of financial gain.

Regarding bad faith, Complainant asserts "Respondent in the subject action

has no connection with the name ‘MI TIERRA’, and has not used the web address

in connection with a bona fide offering of goods or services. Thus, Respondent

is acting in bad faith and should not be allowed to benefit from such actions."

Complainant requests the Panel to order the registrar to transfer the disputed

domain name to it.

B. Respondent

Respondent asserts that:

"The domain name was registered in January, 22, 1999, with the purpose

of offering Internet based information on the different Latin American countries.

The domain name was never registered with the purpose of offering products or

services related to:

1) Event coordination and catering services, providing coordination of transportation,

decorations, entertainment, invitations, photographers, souvenirs, and gift

baskets; prepared takeout food service.

2) Clothing, namely t-shirts, sweat shirts, polo shirts, vests, and hats.

3) Printed materials, namely souvenir menus and calendars.

4) Restaurant services."

Respondent concedes that the disputed domain name "may be confusingly

similar to MI TIERRA", but notes that there are other registered domain

names similar to that term, and that there are a number of similar domain names

that remain available for registration.

Respondent asserts that the disputed domain name was not registered or used

in bad faith. It states that it has not offered the domain name for sale, that

it has explored collaboration opportunities with other parties (see Factual

Background, supra), that it lacked adequate funding to develop its site

but will do so in the near future, that it is not in competition with Complainant’s

business, that it did not register the disputed domain name to confuse Internet

users and has never offered a product or service, that on March 2, 2002,

it included a disclaimer of association on its website, and that "Respondent

has always made a legitimate non-commercial use of the domain name never tarnishing

the trademark of the Complainant."

Respondent requests the Panel to reject a finding of abusive domain name registration

and use.

6. Discussion and Findings

The Policy is addressed to resolving disputes concerning allegations of abusive

domain name registration and use. The Panel will confine itself to making determinations

necessary to resolve this administrative proceeding.

It is essential to dispute resolution proceedings that fundamental due process

requirements be met. Such requirements include that a respondent has notice

of proceedings that may substantially affect its rights. The Policy, and the

Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"),

establish procedures intended to assure that respondents are given adequate

notice of proceedings commenced against them, and a reasonable opportunity to

respond (see, e.g., paragraph 2(a), Rules).

In this case, the Panel is satisfied that WIPO took all steps reasonably necessary

to notify the Respondent of the filing of the complaint and initiation of these

proceedings. Respondent has filed a response to the complaint indicating that

it received notice and was afforded an adequate opportunity to respond.

As a preliminary matter, the Panel notes that Complainant transmitted a supplemental

filing replying to matters raised by Respondent in its response. That supplemental

filing is directed to legal arguments made by Respondent that should have been,

and to a large extent were, anticipated by Complainant in its complaint. Complainant

also challenges Respondent’s assertions regarding its intentions. However, in

doing so, Complainant does not provide information not already on the record

before the Panel. The Panel declines to accept Complainant’s supplemental submission.

Paragraph 4(a) of the Policy sets forth three elements that must be established

by a Complainant to merit a finding that a Respondent has engaged in abusive

domain name registration, and to obtain relief. These elements are that:

(i) Respondent’s domain name is identical or confusingly similar to a trademark

or service mark in which the complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain

name; and

(iii) Respondent’s domain name has been registered and is being used in bad

faith.

Each of the aforesaid three elements must be proved by a complainant to warrant

relief.

Complainant is the holder of trademark and service mark registrations for the

term "MI TIERRA" in the United States and is using that mark in commerce

in connection with providing restaurant and catering services and offering clothing

products for sale (see Factual Background, supra). Complainant’s

registration of the "MI TIERRA" mark on the Principal Register at

the USPTO establishes a presumption of its validity in U.S. law [1].

While the mark consists of a common descriptive phrase in the Spanish language

("MY LAND" or "MY EARTH"), it is used by Complainant in

a manner that may be suggestive of its restaurant and other services and goods.

Respondent has not contested Complainant’s rights in the mark, and the Panel

determines that Complainant has rights in the mark "MI TIERRA" on

the basis of the presumption arising from USPTO registration, which presumption

stands unrebutted.

Respondent has conceded that the disputed domain name is confusingly similar

to Complainant’s mark, while in the context of attempting to establish rights

and legitimate interests suggests it is planning to use the disputed domain

name outside Complainant’s channels of commerce. Whether or not Respondent might

in theory be able to avoid a finding of confusing similarity between the disputed

domain name and the mark based on use in separate channels of commerce, since

Respondent has not actually used the disputed domain name in commerce, the Panel

need not explore this issue in the abstract. The Panel determines that the disputed

domain name is confusingly similar to Complainant’s mark.

The Panel notes, however, that Complainant’s mark is a common descriptive phrase

when used in contexts outside Complainant’s channels of commerce (its restaurant

and related clothing business), and in that respect the mark is relatively weak.

The Panel is not persuaded that Complainant’s mark is so "well known"

that its protection should be presumed to extend to channels of commerce outside

those in which Complainant presently operates.

Complainant has established the first of the three elements necessary to a

finding that Respondent has engaged in abusive domain name registration and

use.

The second element of a claim of abusive domain name registration and use is

that the respondent has no rights or legitimate interests in respect of the

domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several

ways in which a respondent may demonstrate rights or legitimate interests:

"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." (Policy, paragraph 4(c))".

Respondent does not suggest that it has been commonly known by the disputed

domain name. Nor, since Respondent has only used the name in connection with

what are essentially "under construction" postings, can it be said

to be making legitimate noncommercial or fair use of the name.

A factual issue in this case is whether Respondent, prior to notice of the

dispute, has made "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".

Respondent registered the disputed domain name in January 1999. At that time,

Complainant’s mark had long been registered, and Respondent by operation of

U.S. trademark law had constructive notice of Complainant’s rights in the mark.

It did not necessarily have notice of a dispute concerning use of the domain

name, but it seems fair to assume that within the space of three years as it

claims to have explored "portal" and "co-branding" opportunities

it became aware of Complainant’s business and the potential for interference

with its mark.

It has been three years since Respondent registered the disputed domain name,

and the only evidence it has to show in respect of preparations for bona fide

use of the name in connection with an offering of goods or services is a single

exchange of e-mails in mid-2000 regarding a vague inquiry it made in respect

to "co-branding opportunities". While Respondent asserts that it intends

to use the disputed domain name outside Complainant’s channels of commerce,

since Respondent has not made any such use it is difficult for the Panel to

draw any conclusion about channels of commerce. The mere assertion of intentions

does not suffice to establish preparations for use outside particular lines

of commerce. In light of the three year period between registration of the disputed

domain name and the filing of the complaint in this matter, the Panel is disinclined

to find that Respondent has carried the burden of proof to demonstrate preparations

to use the disputed domain name for a bona fide offering of goods or services

prior to notice of a dispute.

The Panel finds that Respondent has failed to establish rights or legitimate

interests in the disputed domain name, and that Complainant has therefore established

the second element necessary for a finding of abusive registration and use.

The Policy indicates that certain circumstances may, "in particular but

without limitation", be evidence of bad faith (Policy, para. 4(b)). Among

these circumstances are (1) that the domain name has been registered or acquired

by a respondent "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 [respondent’s] documented out-of-pocket

costs directly related to the domain name" (id. para. 4(b)(i));

(2) that a respondent has 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 [the respondent has] engaged in a pattern of such

conduct" (id., para. 4(b)(ii)), and (3) that a respondent "by

using the domain name, … [has] intentionally attempted to attract, for commercial

gain, Internet users to [its] 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 [respondent’s] web site or location of a product

or service on [its] web site or location" (id., para. 4(b)(iv)).

There is no evidence on the record of this proceeding that Respondent registered

the disputed domain name for the purpose of selling it. Respondent has offered

evidence that it rejected an offer for purchase by a third party. Although this

evidence is not conclusive as to Respondent’s intentions, it does provide some

support for the conclusion that Respondent did not register the disputed domain

name with the intention to sell it. There is no contrary evidence, and the Panel

is not prepared to infer a bad faith intention to sell.

There is no evidence on the record of this proceeding that Respondent has engaged

in a pattern of registering domain names that incorporate the marks of third

parties. The Panel concludes that Respondent has not registered Complainant’s

mark to prevent Complainant from registering it as part of a pattern of conduct.

Complainant’s principal contention regarding Respondent’s bad faith registration

and use of the disputed domain name is that Respondent has intentionally attempted

to attract Internet users for commercial gain by creating confusion as to Complainant’s

sponsorship of or affiliation with Respondent’s website (or third party websites

to which Respondent has redirected the disputed domain name).

Complainant has provided evidence only of the linking of the disputed domain

name to web pages that are effectively "under construction" pages

(in some cases including unusual designs or logos). There is no evidence to

suggest that Respondent engaged in this particular activity for commercial gain,

or that this took advantage of Complainant’s commercial interests.

The Panel is essentially asked to infer that that Respondent will in the future

make use of the disputed domain name in a way that improperly interferes with

Complainant’s rights in its mark. In some circumstances, such as when a mark

is highly distinctive and/or well known, an inference of bad faith intention

regarding offering for sale or use to confuse Internet users may not be unreasonable.

The possibilities for legitimate use may be rather remote, and a respondent

may have offered no evidence in rebuttal of an otherwise apparent intention.

In the present proceeding, there are legitimate uses that might be made of

the term "mi tierra" outside Complainant’s channels of commerce, and

Respondent has indicated its intention to use the disputed domain name in that

way. Respondent is aware that use of Complainant’s mark in a way that is likely

to create confusion among Internet users as to Complainant’s association with

the disputed domain name would be inconsistent with the Policy, and potentially

with U.S. trademark law.

On the facts presented here, the Panel is not willing to draw an inference

that Respondent intends to use the disputed domain name to attract Internet

users for commercial gain by taking advantage of Complainant’s rights in its

mark. Prior to this proceeding, Respondent has not used the domain name in bad

faith. Although the list of bad faith factors in paragraph 4(b) of the Policy

is not exclusive, the Panel does not find it appropriate to employ additional

factors in this case.

Complainant has failed to establish that Respondent registered and used the

disputed domain name in bad faith within the meaning of paragraph 4(b) of the

Policy. The Panel therefore declines to make a finding that Respondent has acted

in violation of the Policy, and it declines to direct the registrar to transfer

the disputed domain name to Complainant.

7. Decision

Based on its finding that the Complainant, M.T.C., Inc., has failed to establish

that Respondent registered and used the disputed domain name, <mitierra.com>,

in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b) of the Policy,

the Panel declines to find that Respondent, Net L@tino, Inc., has engaged in

abusive registration and use of the domain name <mitierra.com>. The registrar

is not ordered to transfer the disputed domain name.

Frederick M. Abbott

Sole Panelist

Dated: April 1, 2002

Footnote:

1. 15 USCS § 1057(b). See, e.g., Avery

Dennison v. Sumpton, 189 F.3d 868 (9th Cir. 1999).