National Arbitration Forum

 

DECISION

 

Azteca Web, S.A. de C.V. v. Pixel Plata c/o Victor Hernandez

Claim Number: FA0706001002527

 

PARTIES

Complainant is Azteca Web, S.A. de C.V. (“Complainant”), represented by Seth A. Horwitz, of Glast, Phillips & Murray, P.C., 13355 Noel road, Suite 2200, Dallas, TX 75240.  Respondent is Pixel Plata c/o Victor Hernandez (“Respondent”), represented by Sergio De Alva Rodriguez, of Molina Salgado & De Alva, S.C., Avenida De las Fuentes No. 170, Colonia Jardines del Pedregal, C.P. 01900, Mexico City Mexico.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <aztecamedia.com>, (“the disputed domain name”) and it was registered with Namesdirect on July 7, 2000.

 

PANEL

The undersigned, David H Tatham, certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on June 8, 2007; the Forum received a hard copy of the Complaint on June 8, 2007.

 

On June 12, 2007, Namesdirect confirmed by e-mail to the Forum that the disputed domain name was registered with it and that Respondent is the current registrant of the name.  Namesdirect has verified that Respondent is bound by the Namesdirect registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On June 14, 2007, a Notification of Complaint and Commencement of Administrative Proceeding, setting a deadline of July 5, 2007 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@aztecamedia.com by e-mail.

 

A timely Response was received and determined to be complete on July 3, 2007.

 

A timely Additional Submission from Complainant was received on July 9, 2007 and determined to be complete pursuant to Supplemental Rule 7(a).

 

A timely Additional Submission from Respondent was received on July 13, 2007 and determined to be complete pursuant to Supplemental Rule 7(c).

 

On July 11, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Mr. David H Tatham as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

 

Complainant, Azteca Web, S.A. de C.V. is a subsidiary of TV Azteca, S.A. de C.V. and acts as its agent.  TV Azteca S.A. de C.V. owns the second largest television network in Mexico which is called TV AZTECA and which reaches 13 countries in Central and South America.  It began to use the name in 1993 in Mexico and in 1994 in the USA.

 

Complainant advertises its services widely in different media and also through its various websites such as <tvazteca.com>.

 

The parent company, TV Azteca S.A. de C.V., is the owner of the following 3 U.S. trademark registrations for the words TV AZTECA + a fanciful design (in green, purple, red and yellow) –

·        Reg. No. 2,289,909 dated November 2, 1999 with a priority date of November 28, 1997 but without any quoted date of first use.  It is registered for various services in Class 40.

·        Reg. No. 2,289,910 dated November 2, 1999 with a priority date of November 28, 1997 and April 14, 1994 as its date of first use.  It is registered for “Television” in Class 38.

·        Reg. No. 2,428,683 registered for “Printed matter and printed publications, namely, posters” in Class 16 dated February 13, 2001, with April 14, 1994 as its date of first use.  

 

The parent company also owns 2 Mexican trademark registrations.  The first is for the words TV AZTECA + the above design, Reg. No. 568,032 dated November 28, 1997 for a long list of services in Class 41.

 

The second Mexican trademark is for the words AZTECA MEDIA, Reg. No. 932,078 dated April 11, 2006 for a long list of services in Class 38.

 

Copies of all these trademarks were annexed to the Complaint.

 

Complainant contends as follows –

·        that the disputed domain name is nearly identical to its trademark AZTECA MEDIA;

·        that Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services because it is being used to attract visitors to a portal listing advertising for others, and not for any significant offering of goods or services offered by Respondent;

·        that Respondent is not making a legitimate or fair use of the disputed domain name, because it is misleadingly diverting customers to its website at the disputed domain name with intent for commercial gain;

·        that Complainant has never authorized Respondent to use the disputed domain name; and

·        that the disputed domain name has been registered in bad faith because –

Ø      Complainant wrote to Respondent on April 27, 2007, informed them of their rights in the trademarks TV AZTECA and AZTECA MEDIA, and offered to buy the disputed domain name.  Respondent did not reply.  A copy of Complainant’s e-mail was annexed to the Complaint.

Ø      Respondent has intentionally tried to attract users to its website at the disputed domain name for commercial gain and has created a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and of products or services on that site.  In this respect, Complainant annexed a copy of the page at Respondent’s website which, for example, contains a link to “Radio aztecamedia” which directs visitors to a page for downloading and listening to music from iTunes.  Complainant further contends that the site also contains links to sports and news pages which are unrelated to Respondent. 

Ø      The site also contains a small button at the bottom marked “Aztecamedia central” that links to a site purporting to advertise a website design business named “Aztecamedia” which has a merely de minimis presence on the homepage and Complainant contends that it is clear that the chief function of the website at the disputed domain name is to draw visitors based on association with Complainant’s trademark AZTECA MEDIA and the goodwill connected thereto.

Ø      The registration of a domain name which is confusingly 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 and in this regard Complainant refers to the decision in Reuters Limited v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000).

 

B. Respondent

 

1.      Respondent notes that Complainant only alleges confusing similarity between the disputed domain name and the trademark AZTECA MEDIA, but contends that the Mexican registration of this mark belongs not to Complainant itself but to TV Azteca, S.A. de C.V. and that although Complainant states that it is a subsidiary of this company and that it acts as an agent for it, there was no evidence of this relationship attached to the Complaint.  In addition, under Article 136 of the Mexican Law on Industrial Property – which apples to the Mexican trademark registration and to its owner – for a third party, i.e. Complainant, to derive any benefits from a trademark belonging to another, and for such benefits to produce any effect against another party, a licence must be recorded.  Respondent annexed the result of a search of the public database relating to the trademark registration of AZTECA MEDIA which shows that no licence is recorded.  Therefore the disputed domain name is not identical or confusingly similar to any mark in which Complainant has rights and, even if it could be proved that the Complainant is a subsidiary of TV Azteca, S.A. de C.V, as no licence has been recorded, Complainant has no legitimate right to use the mark, let alone pretend that it can act as if it were the owner of it.

 

2.      Furthermore, there is no documentary evidence to say Complainant is acting as an agent for TV Azteca, S.A. de C.V.  Indeed, the only agent mentioned in the Complaint is Mr. Seth A Horowitz of Glast, Phillips & Murray, P.C.

 

3.      Paragraph 1(e) of the Forum’s Supplemental Rules states that:

 

The Party initiating a Complaint Concerning a Domain Name Registration means the single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.

 

Respondent contends that Complainant does not have such a nexus.     

 

4.      Respondent also points out that the Mexican registration of AZTECA MEDIA, Reg. No. 932,078, was filed on April 11, 2006, which is nearly 6 years after the disputed domain name was activated by Respondent.

 

5.      Respondent maintains that it started to use the disputed domain name as early as August 18, 2000, which is 6 years before the trademark AZTECA MEDIA was registered and 7 years before the Complaint was filed.  Respondent annexed to its Response a notarized copy of an Invoice dated August 18, 2000 referring to graphic design services for a shopping mall rendered by “AZTECA MEDIA” Global Creative Solutions and/or Mr. Victor Hernández.  Also annexed were copies of a service agreement between “AZTECA MEDIA” Global Creative Solutions and “Club Corona.com” for web creation and hosting services dated August 11, 2001, and January 17, 2007; and another with the Instituto Nacional de Antropologia e Historia dated August 9, 2002.

 

6.      On the website at the disputed domain name, Respondent offers services such as web and graphic design, but the site also contains advertising for others which it claims is both legal and common practice.

 

7.      Respondent has been using the name AZTECA MEDIA since the disputed domain name was registered and this name is well known by its clients such as Instituto Nacional de Antropologia e Historia and Emmont Inmobiliaria, affidavits from both of whom were annexed to the Response to show that it has been using this business name in order to provide graphic, video, web and photo design, photographic services as well as computer and software technical assistance for its clients.

 

8.      Respondent confirms that it is using its website for commercial gain, but it contends that this use is legitimate and does not interfere with the commercial activities of any other company.

 

9.      On December 4, 2006, Respondent filed an application to register AZTECA MEDIA as a trademark in Mexico for services in Class 42 and this application is still pending.  Respondent contends that this application is proof of its bona fides and of its legitimate rights and interest in the name.

 

10.  With regard to the charge that the disputed domain name was registered in bad faith,  Respondent contends –

 

·        That it has not tried to sell the disputed domain name to Complainant or indeed to anyone else.

·        The disputed domain name was not registered in order to prevent Complainant from using its mark in its own domain.  Complainant’s registration of AZTECA MEDIA was registered 6 years after the disputed domain name was registered.

·        Complainant’s core business is related to television broadcasting, which services are very different from those offered by Respondent.

·        The word ‘azteca’ is the equivalent of ‘aztec’ which, according to an extract from Wikipedia that was annexed to the Response, refers to the pre-Columbian Mesoamerican people of Central America.  The word is very popular in Mexico and abroad and it is generally combined with other terms to identify a wide range of products and services such as “Lineas Aéreas Azteca,” “Chocolates Azteca,” and “Estadio Azteca” which is the largest stadium in Mexico.  Annexed to the Response were the results of searches of the databases of the Mexican Institute of Industrial Property and of the USPTO which show a wide variety of trademarks that have been granted which contain the term AZTECA in combination with other words, and for a wide variety of goods and services.  Also annexed were the copies of the results of Google and Yahoo searches for AZTECA and printouts from the following 10 websites: <azteca.com>, <aztecamedia.co.uk>, <aztecarecords.com>, <aztecahosting.com>, <azteca.co.mx>, <aztecafoods.com>, <aztecamex.com>, <azteca.net>, <mexico-azteca.com>, and <azteca-au.com>.

 

11.  Respondent is not in the same business as Complainant, i.e. it does not provide broadcasting services in Mexico or anywhere else.  Its services are set out in 7 above.

 

12.  Complainant’s trademark AZTECA MEDIA is not, as Complainant contends, a known or a famous mark.  There is no reference to this mark on Complainant’s website and a Yahoo! search for it would produce only references to Respondent.

 

C. Additional Submissions

 

Complainant

 

In its Additional Submission, Complainant offers the following responses to Respondent’s arguments –

           

            Complainant has the right to bring this Complaint

 

Firstly, it is a matter of public record that Azteca Web S.A. de C.V. is a subsidiary of TV Azteca, S.A. de C.V., and annexed to the Additional Submission were copies of the latter’s Annual Reports for 2004 and 2005.  The former simply states that TV Azteca, S.A. de C.V. owns a majority interest in Azteca Web S.A. de C.V., while the latter adds that it has a 100% holding in it.

 

Secondly, under U.S. trademark law, the actions of a subsidiary with respect to a mark inure to the benefit of the parent corporation as owner of the mark.

 

Thirdly, as Azteca Web S.A. de C.V. is wholly owned by TV Azteca S.A. de C.V., it clearly acts in this matter as its agent .

 

Confusing Similarity

 

The disputed domain name is confusingly similar to the 3 U.S. and 1 Mexican trademarks for TV AZTECA belonging to TV Azteca S.A. de C.V.  Two of the U.S. marks claim April 14, 1994 as their date of first use, the third claims priority of November 28, 1997, and the Mexican registration claimed September 7, 1992 as its date of first use. Respondent has offered no proof that it used the disputed domain name prior to these dates of first use.

 

No Rights or Legitimate Interests

 

In addition to the arguments in this respect contained in the Complaint, Complainant contends as follows –

·        TV AZTECA has existed since 1968 although, only since 1993 under that name. It is, as said in the Complaint, the second largest television network in Mexico and reaches out to 13 other countries.  It is inconceivable that Respondent was not attempting to capitalize on the goodwill generated by this extensive coverage when it chose the name Azteca Media and registered the disputed domain name. The name TV AZTECA is so strong that there cannot be an innocent interpretation for Respondent’s choice of such a similar name.

·        It is irrelevant that Respondent’s business does not include television broadcasting; the only important thing is that consumers are likely to confuse the disputed domain name with Complainant’s TV AZTECA and AZTECA MEDIA trademarks.  In any case, Respondent has admitted that it offers some of the same services as Complainant which is an additional likelihood of confusion.

·        Respondent’s use of the disputed domain name is not based on any legal right, is illegitimate and should be halted.

 

Bad Faith

 

With respect to television, as well as media in a broader sense, the word “Azteca” has become deeply connected with the TV AZTECA mark and, by permitting the registration of the trademarks TV AZTECA and AZTECA MEDIA, the U.S. and Mexican trademark authorities have found the Azteca name to be distinctive for the purpose of identifying television and a wide variety of other media services.  Other uses of the word “Azteca,” whether in commerce, online, or in trademarks, has no effect on Complainant’s marks.

 

Complainant constitutes a vast media empire that has existed since 1968 and has heavily promoted the TV AZTECA brand since 1992.  Respondent must have sought to create a likelihood of confusion with Complainant’s marks when choosing and developing the suspiciously similarly named domain name <aztecamedia.com> and website.  Therefore the disputed domain name must be considered as having been registered in bad faith.

           

Respondent

 

In its Additional Submission, Respondent repeats many of the facts and contentions made in its Response, but in addition it offers the following responses to Complainant’s arguments in its Additional Submission –

 

Complainant has the right to bring this Complaint

 

Complainant has not fully proved the corporate relationship between itself and its parent company TV Azteca S.A. de C.V. with evidence from Mexico.  Complainant company is not even mentioned on the website of its parent.  Furthermore, according to the evidence submitted by Complainant, as it was only formed in 2005, it cannot be considered as having any legitimate interests over the disputed domain name which was created on July 7, 2000.

 

Complainant refers to U.S. law, but this is not binding on Complainant’s Mexican registration of the trademark AZTECA MEDIA.  Under Mexican law, in order for a third party to benefit from the trademark rights of a different company, and for such benefits to produce effects against other parties, the necessary licence should be recorded.

 

Identical or Confusingly Similar

 

The fact that Complainant might have rights in the trademark TV AZTECA is irrelevant because that mark is not confusingly similar to the disputed domain name.  In any case, if it was similar, then it should also be similar to every other domain name that includes the word “azteca,” and in this respect Respondent referred to the domain name <azteca.com>, which was registered in 1996 and which is owned by a U.S. company called Azteca Systems Inc.

 

Respondent concludes by stating that it is clear that Complainant has no rights in any trademark that is identical or confusingly similar to its domain name.

 

Rights or Legitimate Interests

 

Respondent alleges that Complainant has again failed to demonstrate that the disputed domain name was created with the purpose of obstructing the exploitation of its trademarks.  Respondent is currently trading under the name “AZTECA MEDIA” and has been using the disputed domain name <aztecamedia.com> since August 18, 2000, which is 6 years before the registration by Complainant’s parent company of the trademark AZTECA MEDIA and 7 years before the filing of this Complaint.

 

The disputed domain name has been used in respect of a bona fide offering of services and Respondent’s name is well known by its clients, as evidenced by the copies of several invoices (dated variously between October 2000 and April 2002) which were annexed to the Additional Submission.  Respondent is not aware of Complainant offering any services, whether directly or indirectly, to the public under the name AZTECA MEDIA so it is completely false for Complainant to allege that Respondent is trying to misleadingly divert customers or potential customers that it does not have.  Respondent has no wish to take advantage of Complainant’s trademark TV AZTECA, in the light of the fact that the word AZTECA has already been included in hundreds of trademarks in Mexico and elsewhere.

 

Annexed to the Additional Submission were copies of the WHOIS records of 9 domain names that include the word “azteca,” all of which have been registered since 1996.

 

Respondent concludes from the above arguments that it does indeed have legitimate rights to the disputed domain name.

 

Bad Faith

 

It is not evidence of bad faith that Respondent disregarded what it describes as “a threatening and ridiculous” e-mail from Complainant offering to buy the disputed domain name.  It did not respond to this as it did not wish to sell the name.

 

Respondent’s use of its domain name, trademark, and website for services which are different from those covered by Complainant’s parent company’s trademarks, i.e. telecommunications, cannot create a likelihood of confusion.  As is confirmed by Complainant, its parent company is a television network, not a provider of different types of services via the Internet and off-line.  Respondent’s website contains not a single reference to TV so it is clear that there is no intention to attract Internet users to the site by creating a likelihood of confusion – even if the trademark AZTECA MEDIA was to be being used, which it is not.

 

It is not evidence of bad faith on the part of Respondent to have registered a domain name that is, as is alleged by Complainant, similar to a highly distinctive trademark. Respondent counters by pointing out that distinctiveness is acquired through use and there has been no use of the trademark AZTECA MEDIA, which is composed of two common terms.

 

FINDINGS

Complainant is a subsidiary of TV Azteca S.A. de C.V. who is the owner of the second largest television network in Mexico which reaches 13 countries in Central and South America.  It owns registrations, in the U.S. and Mexico, of the trademarks AZTECA MEDIA and TV AZTECA.

 

Respondent is a Mexican company which has provided graphic, video, web and photo design, photographic services as well as computer and software technical assistance for its clients since 2000 under the brand name AZTECA MEDIA.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “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 requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)   the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(2)   Respondent has no rights or legitimate interests in respect of the domain name; and

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

 

Preliminary Issue

 

Respondent has claimed that Complainant, Azteca Web, S.A. de C.V., has no locus to bring this Complaint because none of the trademarks cited as being confusingly similar to its domain name are owned by Complainant but by its parent company TV Azteca, S.A. de C. V.  Respondent also claims that the original Complaint contained no proof of the relationship between these two companies; and there is no record of Azteca Web S.A. de C.V. having been recorded as a licensee of the cited trademarks, a necessary requirement of Mexican law.

 

In its Additional Submission, Complainant, Azteca Web, S.A. de C.V., has proved conclusively that it is a wholly owned subsidiary of TV Azteca, S.A. de C.V. but has provided no explanation as to why the Complaint was filed in the name of a subsidiary rather than the parent company.  The Complaint merely states that the subsidiary was acting as an agent for its parent and proceeds to refer to both companies as “Complainant.”  The Panel found this nomenclature confusing and has not followed suit.

 

Therefore the question to be decided by the Panel is: can a subsidiary bring a complaint on behalf of its parent?  With that in mind he has examined a number of earlier decisions.

 

There are a number of examples of decisions under the Policy in which it has been accepted that a complainant has rights in the relevant trademark by virtue of being a licensee.  See Toyota Motor Sales, U.S.A., Inc. v. Fleetrates.com, FA 568488 (Nat. Arb. Forum Nov. 21, 2005); see also HCS Misco v. Caturegli, D2000-1438 (WIPO Jan. 29, 2001).  However, there is no suggestion in this case that Complainant has been licensed to use any of the cited trademarks.  Indeed, Respondent has stressed that no licence has been recorded at the Mexican Institute of Industrial Property.

 

In another case, Hormel Foods Corp. v. Wizard of Austin, FA 602996 (Nat. Arb. Forum Jan. 12, 2006) the complaint was filed by 3 companies who were all members of the Hormel group, but they were allowed to proceed as one complainant for the purposes of the decision.  Again this is not strictly relevant to the present case because in it only one company has been named as Complainant.

 

In HSBC Holdings plc v. Rayner, DTV2001-0021 (WIPO Nov. 5, 2001), a case that arose in the Tuvalu ccTLD but which was decided under the Policy, the Decision, by a 3-person Panel, found that:

 

While it may be said that the goodwill under the name belongs to the Complainant’s subsidiary rather than the Complainant itself, the Panel considers that the Policy should be interpreted as permitting a parent company to make a complaint on behalf of its group.

 

Again, this is not strictly relevant, as in the present case it is the complainant who is the subsidiary.  However, the finding does provide some indication that in UDRP cases, parents and subsidiaries can be treated as a single entity.

 

However, in the case of Pioneer v. Pioneer Construction Materials, FA 117865 (Nat. Arb. Forum Oct. 8, 2002) appears the following statement of the law:

 

First, ordinarily the ownership of marks as between a parent and subsidiary is a matter to be decided by the parties themselves.  See McCarthy on Trademarks and Unfair Competition § 16.37 (4^th ed.).  Second, when a party has beneficial ownership of something, the party ordinarily has the right to use that property even though another party may have legal ownership or title to the property or asset.  Black’s Law Dictionary 1540 (7^th ed.).

 

This would seem to be rather more relevant to the present case.

 

In Raycomm Media, Inc. v. Gawen Lawrence, FA 147306 (Nat. Arb. Forum Apr. 23, 2003), the relevant trademark (KTVO) was owned by a company of which the complainant claimed to be the owner.  The Panel commented as follows:

 

While that could be a problem for complainant Raycomm Media, Inc., ICANN Policy 4(a)(i) does not require that Complainant actually be the registered owner of a trademark or service mark…which is identical or confusingly similar to Respondent’s domain name.

 

This appears to be precisely the position in the present case and, the Decision concluded:

 

Under those circumstances, this Panel finds that Complainant Raycomm Media, Inc., albeit not the actual owner of the Federally Registered service mark ‘KTVO,’ does in fact have rights in and to that service mark as the parent/owner of the registered owner.

           

In 9 Squared, Inc. v. Mass Management Limited, FA 811932 (Nat. Arb. Forum Nov. 3, 2006), it was clear that the first use of the relevant trademark had been by the parent company of Complainant.  The Panelist commented

 

There is no evidence of the relationship between the UK parent and the Complainant, either in terms of group ownership or in terms of regulation or use of group trademarks. The question of whether a complainant which is a trademark licensee or a related company to a trademark holder has rights in a trademark under the Policy has engaged earlier panels.

 

The Panelist then refers to 4 decisions, none of which, in the opinion of the present Panel, is relevant to the present case.  However, the Panelist continues, “The consensus is that in most circumstances a licensee of a trademark or a related company such as a subsidiary or parent to the registered holder of a mark is considered to have rights in the trademark.”

           

Complainant also mentions United States trademark law which, it alleges, states that where a registered mark is or may be used legitimately by related companies, such use shall inure to the benefit of the parent corporation as owner of a mark or to a subsidiary corporation. The Panel is not an expert in U.S. law (nor in Mexican law), but it is his understanding that registration of a mark by a subsidiary is perfectly legitimate under United States trademark law and the benefits of this trademark registration do, in fact, inure to the benefit of the parent corporation, which some authorities consider the actual owner of the trademark registration.  The Lanham Act and the USPTO’s Trademark Manual of Examining Procedures only allow one party to register the mark, so if a subsidiary registers the mark, the parent company cannot itself also register the mark.  Therefore, only one party may hold the trademark registration and the other related companies can enjoy the benefits of it.

 

It is true that the present case is between two Mexican corporations.  Also, the Panel is bound only by the Policy and its Rules.  Nevertheless, U.S. law could have some bearing on the matter.

 

Conclusion

 

The Panel notes that the Policy does not require a complainant to own the trademark in question, only to have rights in it.  Complainant in this case has proved that he is a wholly owned subsidiary of the owner of the trademarks, he shares a similar name, and he claims to be acting as an agent for the parent company, even though there does not seem to be in existence any licence agreement between the two.  As a result, and in the light in particular of the last 3 of the above quoted decisions, plus the summary of U.S. law, the Panel is prepared to accept that Complainant, as a subsidiary, does have rights in the 5 trademark registrations cited, and that it does have the standing to bring this Complaint on behalf of its parent company.

 

Identical and/or Confusingly Similar [paragraph 4(a)(i)]

 

Complainant refers to two trademarks – TV AZTECA and AZTECA MEDIA – as being confusingly similar to the disputed domain name <aztecamedia.com>.  However, Respondent points out that its domain name was registered many years before Complainant’s single Mexican registration of the trademark AZTECA MEDIA and argues that this trademark therefore cannot form a proper basis for the Complaint.

 

The Panel will now consider this question.  

 

There is no specific reference in the Policy as to the date on which a complainant must have acquired rights, and the consensus view in WIPO’s publication, Overview of Panel Views on Selected UDRP Questions, is that “Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity.”  However, it was also said that in such a case it would be impossible to say that the respondent had registered the domain name in bad faith.

 

Nevertheless, despite the above consensus, it has been found in a number of cases that if a complainant’s trademark rights do not predate a respondent’s registration of his domain name, then the complainant has failed to demonstrate that he has rights in the mark.  For example, in EU Property Portfolio Ltd. v. Salvia Corporation, FA 873726 (Nat. Arb. Forum Feb. 7, 2007), the complaint was denied because the complainant’s trademark EUPP did not predate the respondent’s registration of the domain name <eupp.com>; in Leinart v. Rothmann Group, FA 949681 (Nat. Arb. Forum June 11, 2007), it was said that “To prevail under Policy ¶ 4(a)(i), Complainant must establish that it had rights predating Respondent’s registration of the disputed domain name.”  In Brooke Bollea v. McGowen, D2004-0383 (WIPO June 29, 2004), it was found that complainant, who was the daughter of Hulk Hogan, had not proven that she had been a public figure/celebrity at the time of the registration of <brookehogan.com> as a domain name; and finally, in Phoenix Mortgage Corporation v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) it was said:

 

[Policy ¶4(a)(i)] necessarily implies that the Complainant’s [trademark] rights predate the Respondent’s registration and use of the Domain Name. Any other interpretation would allow a junior trademark user to challenge a prior domain name registration, a possibility that is obviously contrary to the intent of the Policy and to trademark law generally.   

 

In the Panel’s view, Respondent’s domain name <aztecamedia.com> and Complainant’s trademark AZTECA MEDIA are identical, apart from the “.com” suffix – which is usually ignored for the purposes of comparison under the Policy – and the absence of a space between the two words.  However, the trademark was only registered in 2006 – which makes somewhat suspect Complainant’s claim that it is “highly distinctive” –whilst Respondent has proved his use of the name since as long ago as 2000.  This is a significant period of time and in the light of this, as well as all of the above decisions, the Panel has decided that he should not take the trademark AZTECA MEDIA into account.

 

But Complainant also has 4 registrations of the trademark TV AZTECA, which it (belatedly) contended was also similar to <aztecamedia.com>.  As 3 of these registrations pre-date the registration of the domain name, the Panel will consider the question of confusing similarity between these two names.

  

Respondent contends that there can be no similarity because the word “azteca” is a common word, and certainly the evidence it produced in support of this argument is impressive.  For example, on the Google search page can be found references to a chain of “Azteca” restaurants, a breed of “Azteca” horses, a CD entitled “Azteca” sung by a group of the same name, and a company called “Azteca Foods.”  Respondent also refers to the Aztecs who were the early inhabitants of Central America and, in fact, the word “azteca” is an adjective, in Spanish, for these people.  It is not surprising therefore that there should be many companies in Mexico, in the Southern United States, and in Central America who include this word in their names, or that there should be so many registered trademarks and domain names which include it.

 

The Panel has therefore concluded that Complainant cannot claim any monopoly in the word “azteca” and although TV is an item that could be said to be included within the general term “media,” these two words are not confusingly similar, which is what is called for in paragraph 4(a)(i).  Therefore, the Panel has concluded that the trademark TV AZTECA and the domain name <aztecamedia.com> are not confusingly similar.

 

As a result, paragraph 4(a)(i) has not been proved.

 

Rights or Legitimate Interests [paragraph 4(a)(ii)] AND Registration and Use in Bad Faith [paragraph 4(a)(iii)]

 

In view of the above findings, it should not be necessary for the Panel to consider the questions of rights or legitimate interests, and bad faith.  However, for the record, the Panel was minded to find that Respondent did have a legitimate right to the disputed domain name and that it was being used in connection with a bona fide offering of services.  Also, as indicated above, there could not possibly be a finding of bad faith, insofar as the trademark AZTECA MEDIA is concerned, as it was not registered until some 6 years after the disputed domain name had been registered.

 

DECISION

As Complainant has failed to establish the requirements of paragraph 4(a)(i) of the Policy, the Panel concludes that relief shall be DENIED.

 

 

 

 

David H Tatham, Panelist
Dated: July 19, 2007

 

 

 

 

 

 

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