WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Laboratorios Brovel, S.A. de C.V. v. Braco internacional, S.A. de C.V.
Case No. D2004-0263
1. The Parties
The Complainant is Laboratorios Brovel, S.A. de C.V. of México, D.F., México, represented by Sergio Diaz of México.
The Respondent is Braco internacional, S.A. de C.V., Naucalpan, Estado de Mexico, México.
2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, Inc. Registrar.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 6, 2004, via e-mail and on April 8, 2004, in the requisite number of hard copies. On April 8, 2004, the Center transmitted by email to Network Solutions, Inc. Registrar a request for registrar verification in connection with the domain name at issue. On April 9, 2004, Network Solutions, Inc. Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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), on April 21, 2004, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on the same day. In accordance with the Rules, paragraph 5(a), the due date for Response was May 11, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 13, 2004.
The Center appointed Reynaldo Urtiaga Escobar as the sole panelist in this matter on May 18, 2004. The Panel finds that it was properly constituted. 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.
There is no controversy that English is the language of these proceedings as it is the language of the Registration Agreement.
As fixed by the WIPO Center, the Panel's decision is due by June 1, 2004.
4. Factual Background
Complainant is the owner of Mexican trademark registration 103524 in force for "BROVEL" (word mark and device) registered July 1, 1961, in international classes 1, 3 and 5 for use in relation to pharmaceutical products and preparations. In addition, on June 16, 2000, Complainant filed Mexican's trademark application counterpart with the United States Patent and Trademark Office, which application was assigned serial number 76/071451 and is now reaching the final stage of prosecution.
To promote its business in Mexico, Complainant advertises its services and products through its own website for which it registered the domain name with Nic-Mexico on July 2, 1997.
For its part, Respondent registered the domain name that is the subject of this dispute on January 7, 1999. The said registration was applied for by Mauricio Bravo Berensten, allegedly acting for and on behalf of Complainant. It is not disputed that Mr. Bravo is in turn the General Director of Laboratorios Tornel, S.A. de C.V., a competitor of Complainant.
Having found out about Respondent's registration of the domain name at issue and noting that the domain name has not been used ever since through the creation and maintenance of an active website aimed to perform a specific purpose, the Complainant proceeded to file the UDRP Complaint which gave rise to these proceedings.
5. Parties' Contentions
A. Complainant
In essence, the main submissions of the Complainant are as follows:
i) The disputed domain name is identical to Complainant's trademark for the sole difference between them -that is the presence of the gTLD in the domain name-, is of no relevance and therefore does not detract from a finding of identity.
ii) The Complainant has legitimate rights over the domain name in question as a consequence of his registering and using the trademark "BROVEL" since 1961 while Respondent has no rights whatsoever upon the disputed domain name for Complainant has not yielded to Respondent any type of right of use in respect of the mark "BROVEL".
iii) Respondent has never used the disputed domain name for any bona fide offering of goods or services as the said domain name has resolved since its registration to a website labeled "under construction".
iv) The disputed domain name was registered and is being used in bad faith as Respondent registered the domain name to prevent Complainant from reflecting its mark in the corresponding domain name. It is submitted that Respondent's misconduct had already been found in the factually analogous case Parfarm, S.A. v. Braco International, S.A. de C.V., WIPO Case No. D2003-0080.
v) Respondent registered the domain name primarily for the purpose of disrupting the business of Complainant as the disputed domain name was applied for by the representative of one of Complainant's direct competitors, that is Laboratorios Tornel, S.A. de C.V., hence evidencing Respondent's bad faith in the registration and use of the domain name.
vi) Respondent provided false information to the Registrar since the former intentionally misrepresented himself as an authorized agent or representative of Complainant without having any relationship whatsoever towards the latter.
B. Respondent
No counter-arguments were submitted on behalf of Respondent.
6. Discussion and Findings
Preliminary
It is worth noting that given Respondent's failure to submit a Response, the Panel may accept all reasonable and supported allegations and inferences in the Complaint as true. See Charles Jourdan v. Holding AG v. AAIM, WIPO Case No. D2000-0403 (finding it appropriate for the Panel to draw adverse inferences from Respondent's failure to reply to the Complaint) and also Vertical Solutions Mgmt., Inc. v. webnet-marketing, Inc., NAF Case No. FA0095095 (holding that Respondent's failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).
General
According to paragraph 4(a) of the Policy, in order to succeed with its claim, Complainant must prove that each of the three following elements is present:
i. The Domain Name is identical or confusingly similar to a trade mark or 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
A. Identical or Confusingly Similar
As noted in Nicole Kidman v John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415, the issue under this type of analysis is not whether confusion is likely in the trademark sense (that is, confusion as to source based on the domain name and its use in connection with a website) but, rather, whether the domain name, standing alone, is sufficiently similar to the trademark to justify a remedy under the Policy.
Thus, turning to the relevant question of this part, on its face, it is evident that the domain name at issue is identical to Complainant's trademark for it is well settled that as domain names are not case-sensitive, the use of lower case letter is of no relevance from the standpoint of comparing to "BROVEL". Likewise, it is well established that the addition of the generic top-level domain (gTLD) ".com" is without legal significance under this type of analysis for the following reasons: use of a gTLD is required of domain name registrants, ".com" is one of only several such gTLDs, and ".com" does not serve to identify a specific service provider as a source of goods or services. See Busy Body, Inc. v. Fitness Outlet Inc., WIPO Case No. D2000-0127; Infinity Broadcasting Corp. v. Quality Services, Inc., WIPO Case No. D2000-0361 and Blue Sky Software Corp. v. Digital Sierra Inc. and Abdullah Khan, WIPO Case No. D2000-0165.
Accordingly, this Panel finds that the Complainant has proven the first threshold of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
There is no evidence that Complainant has licensed or otherwise permitted Respondent to use the "BROVEL" trademark in which the former has rights or to apply for the domain name incorporating this mark. As Respondent has not submitted a response, the Panel can find no indicia that Respondent has any rights or legitimate interests in the domain name pursuant to paragraph 4(c) of the Policy. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd. and Glenn Greenhouse, WIPO Case No. D2000-1221 (finding that Respondent's failure to respond can be construed as an admission that they have no legitimate interest in the domain names); Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., eResolution Case No. AF-0336 (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).
To the contrary, the fact that the domain name in question has never been used since registration by Respondent indicates the latter's lack of legitimate rights or interests in the domain name. See France-Manche v. Cimagotipo S.L., WIPO Case No. D2001-0771.
The Panel is thus of the opinion that the Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
Complainant sets out uncontested evidence and argument in support of its contention that Respondent has registered and used the domain name in bad faith by having intentionally provided false data to the Registrar and misleadingly recording Complainant's business name for the domain name's contact information despite the lack of any relationship whatsoever between the parties to these proceedings. In this respect, the Panel notes that in effect, Respondent's administrative/technical/billing contact Mauricio Bravo Berentsen passed himself off as Complainant's authorized agent, representative or proxy holder by willfully providing Complainant's trade name to Registrar as part of the contact information for the domain name in suit. The Panel finds Respondent's behavior to be in breach of paragraph 2 of the Policy which clearly states:
"2.- Your Representations. By applying to register a domain name....you hereby represent and warrant to us that (a) the statements that you made in your Registration Agreement are complete and accurate; (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; c) you are not registering the domain name for an unlawful purpose; and d) you will not knowingly use the domain name in violation of any applicable laws or regulations..."
In the present case, by misrepresenting himself as Complainant's agent, representative or the like, Respondent acted in bad faith by furnishing misleading information suggesting an affiliation with the trademark owner that does not exist. It has been found that the intentional supply of false registration details like these constitutes bad faith in the sense of paragraph 4 b) of the Policy. Quixtar Investments, Inc. v. Scott A. Smithberger and QUIXTAR-IBO, WIPO Case No. D2000-0138 and Oakley, Inc. v. Kenneth Watson, WIPO Case No. D2000-1658.
Likewise, the Panel finds paragraph 2 b) of the Policy to have been breached by Respondent as the latter must have known of his direct competitor's long-standing rights in the "BROVEL" trademark and the existence of Complainant's previously registered .MX domain SADD, Inc. v. Steven Weber, et al, WIPO Case No. D2000-0170, hence constituting evidence of his bad faith in registering and using a confusing domain name without possessing any legitimate right or interest.
On the other hand, it is equally undisputed that Respondent's main purpose for registering the domain name in issue was to prevent Complainant from reflecting its mark as domain name. This finding is further strengthened by the fact that Respondent had already been found to have registered in bad faith without any right or interest whatsoever a competitor's domain name as in the present case. See Parfarm, S.A. v. Braco International, S.A. de C.V., WIPO Case No. D2003-0080.
In addition, it is to be highlighted that case law has firmly laid out the existence of bad faith in the registration and use of a domain name when the latter resolves to an inactive website as in the case at hand. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Accordingly, paying regard to all the circumstances of the Respondent's behavior, this Panel concludes that the Complainant has demonstrated the third limb of paragraph 4(a) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Reynaldo Urtiaga Escobar
Sole Panelist
Date: June 1, 2004
Full & Egal Universal Law Academy