WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jafer Limited v. Mrs. Georgina Carranza
Case No. D2002-0473
1. The Parties
The Complainant in this administrative proceeding is Jafer Limited, a corporation organized and existing under the laws of Bermuda. The Respondent in this administrative proceeding is Mrs. Georgina Carranza , who is domiciled in Mexico.
2. The Domain Name and Registrar
The disputed domain name is . The Registrar of the domain name is Network Solutions, Inc.
3. Procedural History
This is a mandatory administrative proceeding submitted for decision in accordance with the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 ("the Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 ("the Rules"), and the World Intellectual Property Organization ("WIPO") Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules").
By registering the subject domain name with the Registrar, the Respondent agreed to the resolution of disputes pursuant to the Policy and Rules.
The Complainant filed its Complaint with the World Intellectual Property Organization Arbitration and Mediation Center ("the Center") on May 17, 2002, by email and on May 28, 2002, by hardcopy. The Complainant filed an Amended Complaint with the Center on May 28, 2002, by email and on May 31, 2002, by hardcopy. On May 31, 2002, having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center formally commenced this proceeding. The Respondent filed its Response with the Center on June 26, 2002, by email.
The Administrative Panel consisting of a single member was appointed on July 11, 2002, by the Center.
Neither party asked to deliver additional material and the Administrative Panel is content to proceed with the material that was filed.
An examination of this material confirms that all technical requirements for the prosecution of this proceeding were met.
4. Factual Background
Complainant�s factual assertions
The Complainant is the owner of more than 250 trademark registrations incorporating the word "Yanbal" in Mexico and other countries such as Argentina, Brazil, Bolivia, Colombia, Chile, Costa Rica, Cuba, Dominican Republic, Ecuador, El Salvador, Guatemala, Honduras, Korea, Nicaragua, Panama, Paraguay, Peru, Puerto Rico, Spain and the United States of America.
The Complaint is based basically on trademarks YANBAL, Mexican No. 371406 and YANBAL and design, registration No. 542720. The first registration covers cosmetics and perfumery products, and the second covers all the goods of International class 3.
The Complainant has used its trademarks "Yanbal" in Mexico for over ten years in connection with cosmetics, perfumery products, essential oils, hair lotions, soaps and other goods classified in class 3 of the International classification of goods and services, consequently, this trademark has become well known.
Yanmex, S.A. de C.V. is a Mexican subsidiary of the Complainant.
The Complainant became aware that the Respondent, an ex-Yanmex�s salesgirl, was offering its products in Aguascalientes, Mexico and had registered the subject domain name on December 17, 1998. At that time she was a representative of Yanmex. She obtained the registration "as a domain name" of the trademark of the company, alleging that this it would allow her to sell more of the Complainant�s products through the Internet.
In view of the foregoing, the Complainant immediately decided to end its relationship with the Respondent.
The Complainant, through its subsidiary Yanmex, contacted the Respondent and requested that the subject domain name be assigned to the Complainant immediately.
The Respondent answered the request by email dated January 29, 1999, stating:
"�in order to be able to carry out the assignment of the domain name Y, it will be necessary that you deposit in my bank account the amount of $25,000.00 U.S. Cy. (twenty five thousand U.S. dollars) in my check account in the Bital Bank located in Aguascalientes, Aguascalientes, Mexico. In order to proceed with the deposit you should make it as follows; BIMEN-MX-MXXXX to the account No. 04013314760 and once I have said deposit in my account, I will proceed to assign the domain name "Y"."
The Complainant refused the Respondent�s offer and filed with the Mexican Institute of Industrial Property (MIIP) an administrative infringement action against the Respondent for the unauthorized use of the trademark YANBAL. The MIIP resolved that the Respondent had not infringed the trademark YANBAL because she was selling original products.
The Complainant concluded that it was necessary to initiate this proceeding.
Respondent�s factual assertions
The Respondent acknowledges that the Complainant has several trademarks in several countries, including one in Mexico. The Respondent had the right to use the Mexican mark by virtue of a mercantile contract signed on March 14, 1998, by the Respondent and her husband as distributors of the Complainant in Mexico.
The Respondent concedes that the trade name, the pictures and artwork and the subject domain name are identical because the artwork and pictures were provided to the Respondent by the Complainant to able her to build a web page. (the logo & artwork were provided in diskettes and by e-mail).
The Mexican Institute of Industrial Property (MIIP) which is referred to in the Complaint, ruled that there was no infringement by the Respondent because there was a commercial relationship between The Complainant or Yanmex and the Respondent as stipulated in the distributor contract/agreement, clause 21 of which says:
"The commission agent (distributor) agrees and is obligated to realize without representation, all the marketing activities that are required for the sale of the products that are being commercialized . "The constituent" (distributor) could contract under their strict responsibility and direction, all the personnel that is needed to realize such activity."
The products offered by the Respondent were manufactured and sold to her as authorized distributor in Mexico, of the Complainant, until it terminated the distributorship contract. At the time of the cancellation the Respondent had over $70,000.00 in inventory of the Complainant�s manufactured products.
MIIP also ruled on this issued in favour of the Respondent in a 20-page opinion, resolution No. 015076 issued on October 15, 2001. In part it said:
"�is worth to mention that all the proof submitted by the defendant constitute enough elements to establish an existing relationship between [the Respondent] and the complainant�as well as the authorization of the second [complainant] to make use of the trademark, and that�s why acts realized by [the Respondent] to use the [subject] domain name�which she owns and that she uses to promote products (Yanbal) of diverse names (Yanbal products) it can not induce error nor confusion with respect with the products she advertises, since she counts with the authorization of the owner of the trademark "YANBAL" in this case [the Complainant]."
The Respondent agrees that the Complainant has used the YANBAL trademark in connection with "cosmetics, perfumery products, essential oils, hair lotions .... etc", but, does not agree that the Complainant or Yanbal is as well known in Mexico. Yanbal is one of the lesser known cosmetic and custom jewelry multilevel companies in Mexico.
The Respondent contributed to the growth of Yanbal in Mexico. The Complainant has inappropriately described her as an ex-salesgirl.
The Complainant assigns titles of leadership to distributors according to the number of affiliations in their first, second and third levels. The first leadership position is "Brass Leader", the second is "Silver Leader", the third is "Gold Leader", and the fourth is "Director".
The Respondent obtained both the Brass and Silver Leadership positions in May of 1998, 46 days after her affiliation as a distributor. The highest leadership position ever in Aguascalientes, since Yanbal started in Mexico (Yanbal celebrated its16th anniversary in 1998), was one distributor with the title of Brass Leader (Maricarmen Correa). The sponsor of the Respondent was Mrs. Teresa Arriaga, who had been a Yanbal distributor for 5 years prior to recruiting the Respondent. She had not been able to attain any leadership position.
When the Respondent became Silver Leader, Mrs. Arriaga also became Silver Leader because of the sales volume and the number of distributors on the Respondent�s downline.
The Respondent was the first distributor in the history of Yanbal, to obtain the leadership title of director in just four and one-half months. Her appointment as director was made by the Director General of the Complainant in Mexico, who traveled to Aguascalientes with, the Complainant�s Executive Vice-President from Peru, Ms. Roxanne Mantilla, to make the appointment at the Hotel Fiesta Americana, during a champagne cocktail reception offered in the Respondent�s honour. The Respondent�s sponsor, Mrs. Arriaga, also became a director.
The Respondent won a nationwide contest during the month of October, as the best recruiter, awarding her the first price, a set of diamonds (Necklace, bracelet and ring valued at over $20,000.00).
The Respondent and her husband received several letters from the Director General of Yanbal Mexico, congratulating her and him for the success in "Yanbal�s Ladder of Success".
The Respondent and her husband developed over sixty productivity, administrative and marketing forms and systems and 2 manuals that the Complainant approved and still uses to train its distributors. In November of 1998 at the invitation and expense of the Complainant, the Respondent was invited to Mexico City, to teach a seminar to all the directors on how to use the manuals and productivity forms developed by her and her husband to increase their sales volume and recruiting of distributors.
Because of her hard work, the Respondent made Aguascalientes, the smallest state in Mexico, "The state with the highest growth in the whole country", as reported by the Director General of the Complainant, in his speech at the appointment of the Respondent as director, during the champagne cocktail reception.
Also because of the performance of the Respondent her husband was hired as an outside consultant to help the Complainant increase sales and recruitment and to train new distributors, using the system used successfully by the Respondent.
Letters of cancellation of the Respondent�s and her husband�s contracts were issued by the Complainant 48 hours after the Respondent declined the offer made by the attorneys representing the Complainant, to transfer the subject domain name to the Complainant for US$5,000.
The Respondent denies the Complainant�s assertion that it became aware of the Web Page to which the subject domain name resolves only in December 1998 because the Complainant knew that the Respondent and her husband would be creating a Web Page as of May 26, 1998.
On May 26, 1998, they presented a 5-year Business plan to the General Manager of the Complainant, Mr. Daniel Lopez. Part of this plan was to develop an Internet Marketing Strategy, which included a web page created by Diego Aguirre and the Respondent.
The Respondent�s husband asked Mr. Lopez whether the Complainant was planning to use the Internet or if it was planning to create a Web Page and was informed that it was not. Mr. Lopez further explained that the only thing the Complainant was planning to use the Internet for, was inter-company communications using Lotus Notes, or something to that effect. The Respondent and her husband then proceeded with other consultants to develop the page.
The first draft was finished on June 28, 1998. The Page did not have artwork, namely the logo, and distinctive pictures of the Complainant�s products. Mr. Lopez directed Mr. Marco Antonio Lopez to provide the Respondent�s husband with the necessary artwork and logos, which were delivered, via e-mail and on diskettes in Mexico City.
During the Complainant�s Christmas party in Mexico city, the Respondent�s husband told Fernando Belmont, who is the owner of the Complainant and all its subsidiaries, that the Respondent and her husband were excited with the response they were getting and with the possibilities to expand internationally on the Internet.
Mr. Belmont became angry and left the party.
The next day Mr. Lopez approached the Respondent�s husband and told him that they should work "something out" because Mr. Belmont wanted the page. His reasons were personal.
Subsequently, there was an exchange of communications in which the parties attempted to reach an accord. The Respondent had her interest in the subject domain name valued. The Complainant sought to purchase the subject domain name and monetary proposals were exchanged. The Respondent sought to deal with a number of issues in the negotiations, but the Complainant�s focus was solely on acquiring the subject domain name.
Negotiations broke down and immediately thereafter the Complainant cancelled the contracts of the Respondent and her husband.
The Respondent denies that she registered the subject domain name in bad faith.
5. Parties� Contentions
A. Complainant
The Complainant relies on its extensive use of the word "yanbal" and on its worldwide registration, placing a particular emphasis on the registrations in Mexico. It contends that the subject domain name is identical.
The Complainant says that the Respondent does not have a legitimate interest in the subject domain name because she registered it without the authorization of the Complainant.
The facts that the Respondent sought $25,000 to transfer the subject domain name and that the registration prevents the Complainant from "reflecting its trademark (Yanbal) in a corresponding domain name" are asserted by the Complainant to constitute bad faith.
B. Respondent
The Respondent does not dispute the fact that the subject domain name is identical to the Complainant�s mark. In fact, she says that is was intended to be so.
The Respondent asserts that she registered the subject domain name with the knowledge and authority of the Complainant and that the Complainant stated that it had no interest in the subject domain name.
She denies bad faith stating that she did not register the subject domain name with the intention of selling it to the Complainant, as alleged by the Complainant. She was prepared to sell the subject domain name only in the context of resolving a number of issues in the commercial relationship of the parties and to placate the owner of the Complainant who had a personal reason for wanting the subject domain name. The Respondent says that had the Complainant wanted to register the subject domain name, it could have done so before the Respondent expressed an interest in doing so or at that time.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove that:
(i) the domain name is identical or confusingly similar to a service mark in which the Complainant has rights; and
(ii) the 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.
Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:
(i) circumstances that indicate that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent�s documented out-of-pocket costs directly related to the domain name;
(ii) registration of the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct;
(iii) registration of the domain name primarily for the purpose of disrupting the business of a competitor;
(iv) by using the domain name, intentionally attempting to attract, for commercial gain, Internet users to the Respondent�s web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on it or a location.
These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.
The resolution of this dispute takes place in the context of a consideration of the requirements of paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
It is common ground that the subject domain name is identical to the Complainant�s mark.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i).
B. Respondent�s Rights or Legitimate Interests
There are serious issues of contested facts that relate to the other components that must be established by the Complainant.
In some cases, an administrative panel can resolve disputed issues of fact because the overall information available to it allows the panel to place assertions into an objective context. Generally, a domain name dispute proceeding is not a forum for resolving such matters. A more formal process that is designed to weigh and consider evidence usually is required.
This case is complicated further by the fact that a domestic tribunal has determined many of the issues that the Complainant brings to this proceeding. It is doubtful that a domain name dispute ever should be used to appeal or to override the results of a domestic tribunal with appropriate jurisdiction. This is particularly so when much of the dispute concerns contested matters of fact.
In this case, the Respondent states that the Complainant did know that she was registering the subject domain name, that it assisted her in doing so and that the Complainant then had no intention of using the subject domain name. These assertions are flatly contradictory of the Complainant�s assertion that the Respondent was not authorized to register the subject domain name. Perhaps, technically this was so in that there was no positive permission given, but on the facts asserted by the Respondent, there was no need for such permission.
Whether the Respondent continues to have a legitimate interest in the subject domain name may revolve around the legality of the contract termination, but that is not a matter than can be determined in this proceeding on the information at hand.
On the information made available to it, the Administrative Panel cannot find that the Respondent does not have a legitimate interest in the subject domain name.
The Administrative Panel is not satisfied that the Complainant has met the requirements of paragraph 4(a)(ii).
C. Bad Faith
Although the decision of the Mexican tribunal may not be determinative of the issue of bad faith in the context of the Policy, its dismissal of the Complainant�s case tends to undermine the Complainant�s contention in this case.
It is clear on the information presented to the Administrative Panel that the Respondent was prepared to sell the domain name and at an amount that usually would support an implication of evidence of bad faith.
The Complainant sought to establish its case on this fact, but on the overall information made available to the Administrative Panel, the $25,000 offer appears to be relied on out of context.
It was made during negotiations dealing with the overall commercial relationship of the parties. The Respondent denies that it was part of her thinking at the time the subject domain name was registered.
On the information made available to it, the Administrative Panel cannot find that the subject domain name has been registered and is being used in bad faith.
The Administrative Panel is not satisfied that the Complainant has met the requirements of paragraph 4(a)(iii).
7. Decision
Based on the information made available to it and on its finding, the Administrative Panel concludes that the Complainant has failed to establish its case. The Complaint is dismissed.
Edward C. Chiasson, Q.C.
Sole Panelist
Dated: July 25, 2002
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