Generic Top Level Domain Name (gTLD) Decisions

Complainant is StarMedia Network, Inc., New York, NY, USA ("Complainant") represented by Kerry A. Brennan, of Pillsbury Winthrop LLP. Respondent is Freyresoft, Inc., Rimac, Lima, Peru ("Respondent").

The domain name at issue is "latinchat.org", registered with Network Solutions, Inc.

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.

Honorable Paul A. Dorf, (Ret.) as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on April 5, 2001; the Forum received a hard copy of the Complaint on April 6, 2001.

On April 6, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name "latinchat.org" 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. 5.0 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 April 6, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 26, 2001 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@latinchat.org by e-mail.

A timely response was received and determined to be complete on April 26, 2001.

On May 2, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf, (Ret.), as Panelist.

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

A. Complainant

The Complainant contends that the domain name at issue is identical or confusingly similar to its service mark, that the Respondent has no rights or legitimate interests in the domain name at issue, and that the Respondent registered and is using the domain name at issue in bad faith.

B. Respondent

The Respondent contends that the domain name at issue is not identical or confusingly similar to the Complainant’s service mark, as it is a generic phrase, that he has rights in the domain name at issue, and that he did not register the domain name in bad faith.

C. Additional Submissions

On May 3, 2001, the Complainant filed an Additional Submission in response to Respondent’s response, which was timely filed.

On May 8, 2001, the Respondent filed a Response to the Complainant’s Additional Submission. Although this was not timely filed, it was considered by this Panelist.

The Complainant first used the service mark on May 4, 1999, when it purchased all of the assets of Wass Net S.L. and acquired the rights and goodwill in the domain name "latinchat.com" and the service mark "LATINCHAT."The complainant operates a website offering a variety of chat services for Spanish-speaking users, which consists of 48 interest-specific channels.

The Respondent registered the domain name at issue on January 18, 1999 for the purpose of creating a website without commercial aims so that Internet users could have the option of chat without said commercialism.

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 canceled 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.

It appears that the Respondent registered the domain name at issue on January 18, 1999. Although the Complainant entered into a Share Purchase Agreement with Wass Net S.L. on April 24, 1998, the Complainant did not begin submitting applications for its service mark registrations until August, 1999. See Interactive Television Corp. v. Noname.com, D2000-0358 (WIPO June 26, 2000) (finding that "[S]erious questions as to whether Complainant has any proprietary rights require us to reject Complainant’s claim. The ultimate decision as to whether Complainant does or does not have proprietary rights is better left to a court or trademark office tribunal").

The Complainant also acquired rights to the domain name "latinchat.com" when it acquired the assets of its predecessor.

Additionally, the domain name at issue is comprised of two generic terms. See Soccerzone, Inc. v NBA, Inc., FA 94361 (Nat. Arb. Forum May 25, 2000) (finding that the Complainant failed to show that it should be granted exclusive use of the domain name "SOCCERZONE.COM", as it contains two generic terms and is not exclusively associated with its business).

Since Respondent’s registration of the domain name at issue, he has expended time and money to set up and maintain the website. See 3Z Productions v. Globaldomain, FA 94659 (Nat. Arb. Forum June 9, 2000) (finding a legitimate interest in a domain name is shown by website development).

The Complainant alleges that the Respondent registered the domain name at issue in bad faith to intentionally attract Internet users to Respondent’s site for financial gain. It does not appear that the Respondent is operating a commercial website, and uses banner advertising to finance the cost of maintaining the website.

The Complainant also alleges that the Respondent’s offer of sale of the domain name at issue to the general public indicates bad faith. The Respondent states that his brother placed the domain name at issue for sale on his Afternic.com account, without his consent. He also states that he requested that his brother remove the domain name from the Afternic.com website.

It is the finding of this Panel that the domain name at issue is comprised of generic terms, and it appears from the evidence presented that the Respondent chose the name and maintains the website in good faith. See Successful Money Management Seminars, Inc. v. Direct Mail Express, FA 96457 (Nat. Arb. Forum Mar. 7, 2001) (finding the domain name <seminarsuccess.com> to be generic and that Respondent registered and used the domain name in good faith "because Respondent selected the name in good faith for its web site, and was offering services under the domain name prior to the initiation of the dispute").