Quepasa Corporation, Inc. v. Latino Communications Inc.
Claim Number: FA0603000662187
PARTIES
Complainant is Quepasa Corporation, Inc. (“Complainant”), represented by Lance C. Venable, of Ellis & Venable, P.C., 101 N. First Ave., Suite 1875, Phoenix, AZ 85003. Respondent is Latino Communications Inc (“Respondent”), 3025 G Waughtown St, Winston-Salem, NC 27107.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <quepasa.tv>,
registered with Network Solutions, Inc.
PANEL
The undersigned 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.
John J. Upchurch as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on March 17, 2006; the National Arbitration Forum received a
hard copy of the Complaint on March 20, 2006.
On March 21, 2006, Network Solutions, Inc. confirmed by e-mail to the
National Arbitration Forum that the <quepasa.tv>
domain name is registered with Network Solutions, Inc. and that the Respondent
is the current registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
Inc. 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 March 29, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of April 18, 2006 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@quepasa.tv by e-mail.
An electronic copy of the Response was received on April 18, 2006. The National Arbitration Forum never
received a hard copy of the Response. Respondent did not submit its Response in
compliance with ICANN Rule #5(a), because the Response was not received in hard
copy. The Panel has discretion as to
whether to accept and consider the deficient Response in making its
decision. See J.W. Spear
& Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17,
2003) (finding that where Respondent submitted a timely Response
electronically, but failed to submit a hard copy of the Response on time, “[t]he Panel is of the view that given the technical nature
of the breach and the need to resolve the real dispute between the parties that
this submission should be allowed and given due weight”); see also Strum v. Nordic Net Exch. AB, FA 102843 (Nat. Arb. Forum
Feb. 21, 2002) (finding that ruling a Response inadmissible because of formal
deficiencies would be an extreme remedy that is inconsistent with the
principles of due process).
Accordingly, the Panel shall allow and consider the electronic copy of
the Response.
On April 24, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed John J. Upchurch as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. The disputed domain name is identical
or confusingly similar to Complainant’s mark;
2. Respondent does not have rights or
legitimate interests therein; and
3. Respondent registered and used the
domain name in bad faith.
B. Respondent
1. Respondent does not contest the
identical or confusingly similar allegation;
2. Respondent states it has rights or
legitimate interests that preceded complainant’s registration of the
domain name; and
3. Respondent denies any bad faith
registration use.
FINDINGS AND 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 the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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.
Respondent does not
contest that Respondent’s <quepasa.tv> domain name is identical to Complainant’s QUE PASA mark in which
Complainant alleges to have rights.
Respondent does not contest that Complainant has rights in the QUE PASA
mark, but Respondent argues that it has rights in the QUE PASA mark that
predate Complainant’s rights in the mark.
Respondent argues that it has demonstrated rights or legitimate interests in the <quepasa.tv> domain name because it is engaged in the bona fide and fair offering of media services in the Winston-Salem area of North Carolina. Respondent has provided evidence of its services in this market, and contends that it registered the disputed domain name to provide Respondent’s customers with easier access to information about Respondent’s media services. Consequently, the Panel concludes that Respondent has demonstrated a bona fide offering of services under Policy ¶ 4(c)(i), or fair use under Policy ¶ 4(c)(iii), in connection with the <quepasa.tv> domain name. See Kur- und Verkehrsverein St. Moritz v. StMoritz.com, D2000-0617 (WIPO Aug. 17, 2000) (finding a bona fide use of the <stmoritz.com> domain name where it resolved it to a website that provided information about the city of St. Moritz, as well as other countries, general news, and net cafes); see also AmeriCares Found., Inc. v. Ewing, D2003-0347 (WIPO June 26, 2003) (finding that the <americare.org> domain name was used in a bona fide manner since respondent registered the domain name on behalf of AmeriCare MedServices, which had been using the “AmeriCare” name in business for seven years prior to the dispute). Furthermore, Respondent states that it registered the <quepasa.tv> domain name on December 20, 2004. However, Respondent asserts that it has been using the QUE PASA mark in connection with its media services business since at least as early as December 1, 1994. Respondent argues that in light of Complainant’s trademark registrations for the QUE PASA mark, Respondent’s use of the QUE PASA mark predates any rights of Complainant in the mark. The Panel finds that Respondent has rights in the mark that precede any use of the mark by Complainant. See Parachute, Inc. v. Jones, FA 94947 (Nat. Arb. Forum July 12, 2000) (denying transfer of the domain name because the respondent’s use of the PARACHUTE mark and the domain name in question preceded any use of the service mark by the complainant).
Additionally, the
Panel finds that Respondent has established that it is commonly known by the <quepasa.tv>
domain
name. Respondent has submitted evidence
of its media services business, as well as evidence of Respondent’s ownership
of two North Carolina state trademark registrations for the QUE PASA mark. Respondent asserts that its media services
business has grown to serve a substantial range of customers throughout the
southeastern United States. Respondent
also contends that it has used the QUE PASA mark in connection with its
offering of Spanish newspaper publications and radio station services since at
least as early as December 1, 1994.
Thus, the Panel finds that Respondent is commonly known by the disputed
domain name and has demonstrated rights or legitimate interests pursuant to
Policy ¶ 4(c)(ii). See Avnet,
Inc. v. Aviation Network, Inc., D2000-0046 (WIPO Mar. 24, 2000) (finding
that the respondent was commonly known by the <avnet.net> domain name
because the respondent submitted “evidence that it was known by the name AVNET
for at least ten years prior to its domain name registration”); see also Digitronics
Inventioneering Corp. v. @Six.Net Registered, D2000-0008 (WIPO Mar. 1,
2000) (finding that the respondent was commonly known
by the <six.net> and <sixnet.com> domain names even though the
complainant had registered the SIXNET trademark because the respondent
demonstrated that its customers associated the respondent’s company with the
domain names).
Complainant has not
effectively established bad faith registration and use by Respondent pursuant to Policy ¶ 4(a)(iii). Respondent registered the <quepasa.tv>
domain name in connection with its
media services business, which serve the Winston-Salem, North Carolina
geographic area. Consequently,
Respondent has legitimate interests with
respect to the <quepasa.tv> domain name. Respondent has
demonstrated legitimate interests in the <quepasa.tv> domain name, and the Panel concludes that
Respondent has not registered or used the disputed domain name in bad faith
pursuant to Policy ¶ 4(b)(iv). See
Mule Lighting, Inc. v. CPA, FA
95558 (Nat. Arb. Forum Oct. 17, 2000) (finding no bad faith where the
respondent has an active website that has been in use for two years and where
there was no intent to cause confusion with the complainant’s website and
business); see also Schering AG v. Metagen GmbH, D2000-0728
(WIPO Sept. 11, 2000) (finding that the respondent did not register or use the
domain name <metagen.com> in bad faith where the respondent registered
the domain name in connection with a fair business interest and no likelihood
of confusion was created).
DECISION
Having established all three elements required under the ICANN Policy, the
Panel concludes that relief shall be DENIED.
John
J. Upchurch, Panelist
Dated: June 6, 2006
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