Domain name - Domain name dispute resolution policy - Bad Faith-Direct and Unfair Competition-Intentional and Willful Misappropriation of Proprietary Rights-Test for Legitimate Usage of Domain Name.

Complainant owns various Mexican registered trademarks for a word mark “ES MAS”, registered by January, 2000. Complainant also owns the domain names esmas.com, esmas.net, and esmas.org.   Respondent has filed word marks and device marks “ERESMAS” or “eresMAS  on February 29, 2000 and March 13, 2000. 

Held: Name Not Transferred to Complainant

Complainant has not met its burden of proof with respect to bad faith by Respondent as set out in UNDNDRP par4(a).   Disputed word fragments ES and ERES are very different in their appearance and meaning. By claiming that Respondent’s domain names are confusingly similar to Complainant’s trademarks, Complainant claims to have exclusive rights to a highly generic and descriptive word.  This is unacceptable.  Respondent also did not act in bad faith as it made substantial investments and thus had a legitimate use for the name ERESMAS. 

Complainant produces no evidence of Respondent’s intent to cause confusion among Complainant’s consumers through promotion and advertising of disputed domain name.  Evidence provided by Respondent shows that Respondent’s domain names were used in connection with the bona fide offering of goods and services prior to the dispute.

Policies referred to

Uniform Domain Name Resolution Policy
 

Registration Agreements referred to
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Panel Decision referred to
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Cases referred to
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Oliver Itenau, Panellist
1. The Parties
1.1 Complainants are the international group of companies known as, and collectively referred to hereinafter as, "TELEVISA". This group of companies includes GRUPO TELEVISA, S.A., Avenida Vasco de Quiroga 2000, Edificio "A", Piso 4, Col: Zedec Santa Fe, 01210 Mexico, D.F., TELEVISA S.A.. DE C.V., Avenida Chapultepec N° 28, Colonia Doctores, C.P. 06724, Mexico, D.F., and TELEFILMES, S.A. DE C.V., Vasco de Quiroga 2000, Zedec Santa Fe, 01210 Mexico, D.F. Telephone: (525) 261-2510; Fax (525) 261-2546.
1.2 The Respondent is RETEVISION INTERACTIVA S.A., Avda. Diagonal, 662 Barcelona, E-08034 España.
2. The Domain Name and Registrar
2.1 The domain names which are the subject of this proceeding are "eresmas.com", "eresmas.net" and "eresmas.org" owned by Respondent. The domain names are registered with REGISTER.COM (www.register.com).
3. Procedural History
3.1 A Complaint was submitted to the WIPO Arbitration and Mediation Center ("WIPO") pursuant to the Uniform Domain Name Dispute Resolution Policy ("Policy") on April 6, 2000.
3.2 On April 9, 2000, a Request for Registrar Verification was sent to REGISTER.COM which issued its verification on April 18, 2000.
3.3 The Notification of Complaint was sent from WIPO to Respondent by e-mail, courier, and facsimile on April 20, 2000.
3.4 A Response was filed on May 12, 2000.
3.5 The Notification of Appointment of an Administrative Panel ("Panel") was sent on May 29, 2000, thus commencing this administrative proceeding.
4. Factual Background
4.1 Complainant owns various Mexican registered trademarks, for a word mark "ES MAS" in classes 38, 42, registered on December 17, 1999, January 24, 2000.

4.2 Complainant has filed an U.S. Trademark Application, covering advertisement services in class 35 and various computer services in class 42, for the mark "ESMAS". Application was received by USPTO on December 21st, 1999.
4.3 Complainant owns the domain names <esmas.com>, <esmas.net> and <esmas.org>, which were registered with NSI and are used as of the date of the Complaint to give access to the Complainant’s Web site. Date of first use is not provided by Complainant, only date of registration.
4.4 Respondent has filed various word marks and device marks "ERESMAS" or "eresMAS" in Spain in classes 9 and 35 on February 29, 2000, and in March 13, 2000.
4.5 Respondent has also filed an European community trademark for the device mark "eresMAS" on March 13, 2000, in classes 9, 35 and 38. The mark has also been filed in other countries.
4.6 Respondent’s corporate name has been changed from RETEVISION INTERACTIVA to ERESMAS INTERACTIVA on April 6, 2000, after agreement of the Company’s Committee of April 5, 2000, and authorization from the Spanish Central Companies Registry of March 17, 2000.
4.7 A Respondent’s subsidiary company was incorporated in Spain on March 13, 2000, under the name ERESMAS INTERNET.
5. Parties’ Contentions
A. Complainant 
5.1 Complainant claims that its trademarks and domain names were filed or registered prior to the Respondent’s domain name registrations for <eresmas.com>, <eresmas.net>, <eresmas.org>. 
5.2 Complainant claims that Complainant’s use of and domain registrations for <esmas.com>, <esmas.com> and <esmas.org> grants Complainant rights on the word "ESMAS" on the basis of common law trademark and/or service mark rights which exist prior to the Respondent’s domain name registrations for <eresmas.com>, <eresmas.net>, <eresmas.org>. 
5.3 Complainant argues that the domain names in dispute are virtually identical to Complainant trademarks, as these are using the identical term "esmas" as the predominant portion of its domain names. It also argues that Respondent’s domain names so resemble Complainant prior rights that this is likely to cause confusion, to cause mistake of deceive. 
5.4 Complainant argues that Respondent’s Web site directly and unfairly competes with Complainant’s Web site, as both sites are Internet portals providing wide range of information to end users. 

5.5 Complainant argues that it has extensively promoted and advertised its marks for featuring "ESMAS", including on the Internet. Complainant argues that it has undertaken significant efforts in making extensive clearance searches. 
5.6 Complainant argues that the Respondent’s domain names have been registered in bad faith because registration was acquired primarily for the purpose of disrupting the business of Complainants. 
5.7 Complainant argues that Respondent’s domain names have been used in bad faith because "the use of the domain names by the Respondent for financial gain in connection with virtually identical Internet business interests, as Complainants’ is an intentional and willful misappropriation of Complainants’ proprietary rights". 
5.8 Complainant requests cancellation of the Respondent’s domain names.
B. Respondent
5.9 Respondent argues that existence of the Complainants was unknown up to the date of the notification of the Complaint, and that no prior approach was made by the Complainant through which the Respondent could have learned of Complainants' project.
5.10 Respondent argues that no documentary evidence has been provided by the Complainant showing the promotion and advertising of the trademark ESMAS.
5.11 Respondent argues that Complainant’s Web site is in its early stage of development.
5.12 Respondent argues that no evidence has been provided as to the risk of confusion between the trademarks.
5.13 Respondent argues that ERESMAS and ESMAS are easy to differentiate due to the different meanings as "ERES MAS" translates to "YOU ARE MORE" and "ES MAS" to "IT IS MORE".
5.14 Respondent argues that it has been investing significantly in the promotion of the trademark ERESMAS before the Complaint was notified to them.
5.15 Respondent argues that the filing dates of the trademarks owned by the Respondent are also prior to the notification of the Complaint.
6. Discussion and Findings
6.1 Complainant must prove each of the following three elements set forth in the Uniform Domain Name Dispute Resolution Policy Paragraph 4(a), namely (I) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) 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. The Panel will now look at each one of the elements to determine if Complainant has met its burden of proof.

6.2 Complainant has established being the owner of a trademark filed prior to the Complaint. In order to determine whether or not the Respondent’s domain names are identical or confusingly similar to the trademarks of the Complainant a comparison shall be done between the expressions "ERESMAS" and "ESMAS". The two letters that differentiate them are the prefixed letters "ER", which are not hyphen of punctuation of other irrelevant signs for the purpose of comparing the expressions In addition, the letters "ER" are not a simple adjunction to the word "ESMAS" but are intended to form a different Spanish word "ERES" (YOU ARE) which gives to the entire domain names "ERESMAS" (YOU ARE MORE) a different meaning from that of the trademarks of the Complainant "ESMAS" (IT IS MORE). Comparison shall also take place by separating the words which have a meaning for the Spanish public. The words "ES" (IT IS) and "ERES" (YOU ARE) are both very different in their appearance and in their meaning. In turn the words "MORE" are identical. By claiming that the Respondent’s domain names are confusingly similar to the Complainant’s trademarks, Complainant claims to have exclusive rights on the word "MAS" (MORE), which is not acceptable, as this word is highly generic and descriptive. The Panel rules that the word "ERESMAS" is not identical or confusingly similar to "ESMAS" as required by UDNDR Policy Paragraph 4(a)(I).
6.3 Respondent has evidenced that it had made substantial investments, adopted the name "ERESMAS" as its corporate name and as the name of one of its subsidiaries and filed numerous "ERESMAS" trademarks prior to the notification of the Complaint. The panel considers that the Respondent does not satisfy to the requirement of UDNDR Policy Paragraph 4(a)(ii) and thus that respondent has a legitimate use.
6.4 Both sites appear to have a similar aim of being a Portal for general information and entertainment for the public which is a very common kind of site. Complainant argues that Respondent’s domain names were chosen by Respondent with the intent to cause confusion or profit the Complainant’s trademarks and that extensive promotion and advertisement has been done for them. Nevertheless, this argument of Complainant is based on the alleged similarity of the Respondent’s domain names and the Complainant’s trademarks and Complainant provides no further facts or evidences. In particular Complainant provides no evidence suggesting that promotion has been done, and does not mention or prove the first date of such alleged promotion and advertisement. Complainant has provided insufficient documentary evidence that Complainant should have known the existence of the Complainant’s trademarks and use of its domain names on the Internet. On the contrary, evidences provided by Respondent shows that the Respondent’s domain names were used in connection with the bona fide offering of goods and services prior to the dispute. The Panel considers that Complainant has failed to prove that the domain name has been registered and is being used in bad faith as required by UDNDR Policy Paragraph 4(a)(iii).
7. Decision
7.1 The Panel decides that the Respondent’s domain names "eresmas.com", "eresmas.net" and "eresmas.org" are not identical or confusingly similar to the service marks of Complainant, that Respondent has rights or legitimate interests in such domain names, and that Respondent has not registered or is using the domain name in bad faith.
7.2 The Panel hereby denies the Complaint.