24th Jul 2013
ADMINISTRATIVE PANEL DECISION
Fundación Santa María-Ediciones SM v. M.A. Stenzel
Case No. D2013-0818
1. The Parties
The Complainant is Fundación Santa María-Ediciones SM of Madrid, Spain, represented by Abril Abogados, Spain.
The Respondent is M.A. Stenzel of Kahului, Hawaii, United States of America, represented by ESQwire.com Law Firm, United States of America (“US”).
2. The Domain Name and Registrar
The disputed domain name <sm.net> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 10, 2013. On May 10, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 10, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced May 16, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 5, 2013. On June 4, 2013, the Respondent requested an extension of the Response due date. On the same day, the Complainant filed an objection to the Respondent’s request. On June 5, 2013, the Center extended the Response due date to June 10, 2013. The Response was filed with the Center on June 10, 2013, at 6.37 pm EST, i.e. within the filing deadline. On June 11, 2013, the Center acknowledged receipt of the Response.
The Center appointed Philippe Gilliéron, Andrew Frederick Christie and The Hon Neil Brown Q.C. as panelists in this matter on July 3, 2013. The Panel finds that it was properly constituted. Each member of 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, paragraph 7.
4. Factual Background
The Complainant is a company active in Spain and Latin America named “Fundación Santa María-Ediciones SM”. According to its website, “www.grupo-sm.com”, the Complainant is a Spanish publishing group focused on education.
The Complainant holds numerous word and semi-figurative trademarks across the world consisting in part of the letters “sm”, such as:
-The semi-figurative community trademark (n° 4246021) “ediciones sm”, registered on February 2,2006 under classes 9, 16 and 41 of the Nice Classification (application date: January 20, 2005);
-The semi-figurative community trademark (n° 5602578) “FUNDACIÓN sm”, registered on October 17, 2007 under classes 9, 16 and 41 of the Nice Classification (application date: December 20, 2006);
-The semi-figurative community trademark (n° 5602586) “GRUPO sm”, registered on August 27, 2009 under classes 9, 16 and 41 of the Nice Classification (application date: December 20, 2006);
-The US semi-figurative trademark (n° 1471699) “Ediciones sm” registered on January 5, 1988 under class 41 of the Nice Classification (application date: November 19, 1986);
-The US semi-figurative trademark (n°3207102) “ediciones sm”, registered on February 13, 2007 under class 16 of the Nice Classification (application date: January 26, 2006);
-The US semi-figurative trademark (n° 3702735) “sm”, registered on October 27, 2009 under class 41 of the Nice Classification (application date: June 10, 2008);
-The Mexican semi-figurative trademark (n° 933780) “sm”, registered on May 18, 2006 under class 16 of the Nice Classification (application date: April 19, 2006);
-The Mexican word trademark (n° 971226) FUNDACION SM, registered on November 11, 2008 under class 41 of the Nice Classification (application date: October 30, 2008);
-The Italian word trademark (n° TO2004C00) EDIZIONI SM, registered on March 17, 2008 under class 41 of the Nice Classification (application date: October 29, 2004);
The Respondent registered the disputed domain name on March 6, 1999. The Respondent has registered and owns more than thousand domain names.
According to the screen captures of the website linked to the disputed domain name, the domain name would have been inactive until at least February 2004. On July 31, 2004, the website was displaying a short text about web hosting services. On December 9, 2004, the website at the disputed domain name was proposing a list of links on various topics such as travel, shopping, finance, entertainment, health, computers, gifts, home and insurance. From August 2007 until at least March 2009, the website only displayed the sentence “Check out ours links for the most up to date Sm information and much more”. From October 10, 2010 until at least April 2012, the disputed domain name was linked to a website proposing unintelligible links. At the time the Complaint was filed, the website was proposing pornographic links. The Respondent however seems to have modified the content of the website since then, in the sense that the links displayed on the webpage now refer to real estate, car insurance, online shopping, etc., but redirect users once clicked on to other sets of links, in particular pornographic links.
On October 30, 2012, the Complainant’s legal counsel tried to contact the Respondent by email “to start an amicable discussion with you in order to solve this unfortunate coincidence”. The Respondent did not respond.
5. Parties’ Contentions
The Complainant first alleges that the disputed domain name would be confusingly similar to its various trademarks, since “sm” – allegedly the main element of these trademarks – is entirely contained in the disputed domain name without any further adjunction that would avoid a likelihood of confusion.
Second, the Complainant asserts that the Respondent would have no rights or legitimate interests in respect of the disputed domain name. The Respondent would not have effectively used the domain name until 2012. Since then, the only thing the Respondent used the disputed domain name for would have been pornographic links, which cannot be considered as amounting to a legitimate interest.
The Complainant finally claims that the disputed domain name was registered and is used in bad faith. The Respondent uses the disputed domain name and the letters “sm” to run a website proposing pornographic links. According to the Complainant, the letters “sm” would not be descriptive of pornography. Consequently, the disputed domain name would be particularly dangerous for the Complainant and for the public, since the Complainant’s activity is related to education, which may result in the dilution of the Complainant’s trademarks. The Respondent’s bad faith would be confirmed by his passivity when the Complainant tried to contact him to solve the situation. In addition, the disputed domain name would have been registered in bad faith by the Respondent. The Complainant had rights in the US – where the Respondent is domiciled – on trademarks composed of the letters “sm” when the disputed domain name was registered. Furthermore, the Respondent would be in the domain name business and would own more than 1200 domain names, another clear hint of his bad faith behavior.
The Respondent asserts that the Complainant’s trademarks are not composed of the letters “sm” standing alone, but rather EDICIONES SM, GRUPO SM or accompanied by a stylized design. Consequently, there would be a significant difference between the Complainant’s trademarks and the disputed domain name. In addition, there would be no evidence that the Complainant’s combination of letters “sm” would amount to a well-known trademark. The acronym “sm” would have limitless meanings and would not be distinctive of the Complainant. The Respondent demonstrates this point by the fact that a Google search for “sm” excluding the terms “ediciones” and “grupo” (to avoid references to the Complainant) yields 1,660,000,000 third-party uses of “sm” and by the fact that the acronym has been identified by Wikipedia in relation with many organizations independent of the Complainant. Accordingly, the disputed domain name would be neither identical nor confusingly similar to one of the Complainant’s trademarks.
The Respondent alleges that the disputed domain name would be a common acronym. Since the letters “sm” are not specifically related to the Complainant or any other entity, anyone would be entitled to register a domain name composed exclusively of two letters such as the disputed domain name. Moreover, “sm” represents Respondent’s initials, so that the Respondent would have a legitimate interest in the disputed domain name.
The Respondent alleges that he was not aware of the Complainant’s trademarks at the time of the registration and never used the disputed domain name in relation with the Complainant. He also contests the fact that the letters “sm” would be distinctive of the Complainant. To the contrary, “sm” would be a common two-letter acronym. Hence, the Respondent claims that he did not register the disputed domain name to benefit from the Complainant’s goodwill but because two-letter domain names are very valuable. The disputed domain name is part of the Respondent’s portfolio, comprised of over thousand domain names he has purchased since 1999. The Respondent explains that he hosts undeveloped domain names with parking services and pay-per-click advertising links. In addition, the disputed domain name would offer links related to general and various topics with the bona fide provision of advertising services, not limited to adult links. In any case, the Respondent asserts that the use of adult links can be deemed a bona fide offering of goods or services. For all the above reasons, the Complainant would have failed to prove that the disputed domain name would have been registered and used in bad faith.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “[…] decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
According to the Policy, paragraph 4(a)(i), the Complainant has to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The disputed domain name is <sm.net>. The applicable generic Top-Level Domain (gTLD), in the present case “.net”, may be disregarded under the confusing similarity test. Since the Complainant does not hold any word trademark consisting of the sole letters “sm”, the disputed domain name is not identical to the Complainant’s trademarks.
The question thus arises as to whether the disputed domain name, i.e. the second level domain “sm”, is confusingly similar to the Complainant’s trademarks.
The Complainant holds numerous trademarks consisting in part of the letters “sm”. In particular, it holds US (n° 3702735) and Mexican (n° 933780) semi-figurative trademarks composed in part of the letters “sm”, as well as Mexican and Italian word trademarks consisting of the letters “SM” and the words “FUNDACION”
(n° 971226) or “EDIZIONI” (n° TO2004C00).
The overall impression resulting from these trademarks can however not be considered to be only and predominantly influenced by the combination of the letters “sm”. The distinctive element of the
semi-figurative trademarks is their design. While it is true, that, as regards the word trademarks FUNDACION SM and EDIZIONI SM, the terms “fundación” – the Spanish term for “foundation” – and the term “edizioni” – the Italian term for publishing – are descriptive, this does still not mean that the two letters “sm” are distinctive enough to be confusingly similar to the disputed domain name; quite to the contrary.
As the Panel observed in Pet Warehouse v. Pets.Com, Inc., WIPO Case No. D2000-0105, citing the United States federal Seventh Circuit Court of Appeals in Mil-Mar Shoe v. Shonac, 75 F. 3d 1153, 1161 and n.15 (7th Cir. 1996): “it is possible for two generic terms taken together to achieve trademark or service mark status by achieving a sufficient level of secondary meaning in the relevant community. However, the burden on the party making a claim to distinctiveness or secondary meaning in such a case is high because of the disinclination of the courts to take words of ordinary meaning out of common usage.”
As a result, the Panel finds that the mere combination of the letters “sm” as such cannot be considered to have any distinctive character. While the Complainant has tried to demonstrate that its trademarks would be well known all over the world, the evidence put forward is unpersuasive. To the contrary, as demonstrated convincingly by the Respondent, “sm” is a common acronym used by many entities independent of the Complainant. Consequently, the Panel finds that the two letters “sm” cannot be considered distinctive of the Complainant’s activity.
The Panel considers it worth pointing out that, in Fundación Santa María Ediciones SM v. Telecom Tech Corp., WIPO Case No. D2008-0961 between the Complainant and Telecom Tech Corp., the panel ordered the transfer of the disputed domain name <eso-sm.net> to the Complainant based on its SM and E-ELE SM semi-figurative trademarks. In that case, the panel considered that “the disputed domain name contains both the elements ESO and SM. As noted by the Complainant, in Spain ESO refers to compulsory secondary education, which is a substantial focus of the Complainant’s business. The Complainant uses its “SM” mark, and others, in connection with publishing for secondary education. As such, the use of the term “ESO” together with “SM” in the disputed domain name is clearly suggestive of the Complainant’s business and, by association, its mark. At the least, this has the potential to create confusion in the minds of those Internet users who might be aware of the Complainant’s business”. However, this case must be distinguished from the present one as the Respondent’s activities carried out with the disputed domain name do not lead any user to mistakenly believe that the website attached to the domain name would be affiliated in any way to the Complainant’s business, particularly because the disputed domain name consists solely of the letters “sm”. This finding is consistent with the view expressed by the panel in Fundación Santa María Ediciones SM v. Telecom Tech Corp., supra: “It is true that the terms ESO and SM, used separately, might have a range of connotations. However, when used together the terms suggest a connection with the Complainant’s mark”. It can be concluded from this statement that the letters “sm” alone are not distinctive of the Complainant, a view that is shared by the Panel.
Having regard to their overall impression, the disputed domain name is not confusingly similar to any of the Complainant’s trademarks. As a result, the Complainant has not overcome the first hurdle and its Complaint must be dismissed for this ground.
B. Rights or Legitimate Interests/Registered and Used in Bad Faith
Considering that the Complainant failed to prove that the Policy, paragraph 4(a)(i) was fulfilled, the Panel shall not go into the merits of the Policy, paragraphs 4(a)(ii) and (iii).
For the foregoing reasons, the Complaint is denied.
Andrew F. Christie
The Hon Neil Brown Q.C.
Date: July 24, 2013