WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CCM IP, S.A. v. Hong Kong Names LLC
Case No. D2007-0514
1. The Parties
The Complainant is CCM IP, S.A., Lausanne, Switzerland, of Switzerland, represented by Holland & Knight, LLP, United States of America.
The Respondent is Hong Kong Names LLC, of Hong Kong, SAR of China.
2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 4, 2007. On April 4, 2007, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On April 11, 2007 Moniker Online Services, LLC transmitted by email to the Center its verification response indicating the identity of the registrant and providing the contact details for the administrative and technical contact.
On April 16, 2007 the Center informed the Complainant about the registrant’s identity and contact details provided by the registrar noting also a lack of receipt of the hardcopies of the complaint. On April 25, the Complainant submitted the original and hardcopies of the Amended Complaint.
The Center verified that the Complaint together with the amendment to 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), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 8, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 28, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 31, 2007.
The Center appointed Luca Barbero as the sole panelist in this matter on June 5, 2007. 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.
4. Factual Background
The Complainant is the owner of trademarks consisting of or comprising the expression “Dos Equis” all over the world such as the DOS EQUIS trademark registered on February 25, 1992 (Reg. No. 1,676,953) in the United States of America, DOS EQUIS XX registered on January 14, 1992 (Reg. No. 1,671,837) in the United States of America and the DOS EQUIS XX & Design registered on August 11, 1992 (Reg. No. 1,707,097) in the United States of America.
The Respondent has registered the domain name on May 18, 2000.
5. Parties’ Contentions
A. Complainant
The Complainant points out that is the intellectual property holding company of a world famous Mexican brewer the Cerveceria Cuauhtemoc Moctezuma, S.A. de C.V - which was founded in 1890 and has been operating continuously since that time.
The Complainant states that it produces many fine beers, including those identified with the marks TECATE, CARTA BLANCA, DOS EQUIS, SOL, BOHEMIA and others. More in particular, DOS EQUIS is the mark used to distinguish a world-famous beer that has been produced by the Complainant (or its predecessor in interest) since as early as 1915. For many years, DOS EQUIS beer has been one of the leading beers exported from Mexico.
The Complainant highlights that millions of dollars each year are invested in developing and promoting the DOS EQUIS mark, providing the Panel with a sworn statement of the Complainant’s Managing Director.
The Complainant owns many trademarks consisting of or comprising “Dos Equis” in the United States and worldwide. The Complainant has provided the Panel with a full list of these trademarks, including:
- DOS EQUIS registered in Class 32 for “beer” on February 25, 1992 (Reg. No. 1,676,953). The mark shows a date of first use of July 12, 1900;
- DOS EQUIS XX registered in Class 25 for “clothing for men, women and children; namely, T-shirts, sweatshirts, golf shirts, jackets, sweaters, pants, hats, socks, belts and aprons” on January 14, 1992 (Reg. No. 1,671,837). The mark shows a date of first use of January 31, 1975;
- DOS EQUIS XX & Design registered in Class 32 for “beer” on August 11, 1992 (Reg. No. 1,707,097). The mark shows a date of first use of July 12, 1900;
- DOS EQUIS XX & Design registered in Class 25 for “clothing for men, women and children; namely, T-shirts, sweatshirts, golf shirts, jackets, sweaters, pants, hats, socks, belts and aprons” on March 3, 1992 (Reg. No. 1,677,719). The mark shows a date of first use of January 31, 1975; and
- DOS EQUIS & Design registered in Class 32 for “beer” on December 22, 1970 (Reg. No. 904,930). The mark shows a date of first use of July 12, 1900.
The Complainant contends that the disputed domain name is identical to trademarks in which the Complainant has rights.
With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that the Respondent has no right to the expression “Dos Equis” either as a trademark or as a Domain Name.
The Complainant states that the Respondent does not carry on a bona fide business and that it is not commonly known by the Domain Name.
The Complainant concludes with reference to the issue of the rights or legitimate interest that a letter was sent to the Respondent by certified mail notifying the Complainant’s rights in the contested domain name and requesting the transfer of the domain name to the Complainant. The Respondent has not replied to this letter.
With reference to the circumstances evidencing bad faith, the Complainant indicates that DOS EQUIS beer is known to consumers not just in Mexico and the United States but by consumers around the world and that the DOS EQUIS trademark is so famous that the registration and any attempt to use it could only suggest opportunistic bad faith.
The Complainant emphasizes that the Respondent also violated paragraph 3 of the Policy and the corresponding terms of the registration agreement with M.
The Complainant underlines that the Respondent’s bad faith is further evidenced by its use of Whois Identityshield to obscure and hide its true identity and contact information.
The Complainant concludes that the disputed domain name has been registered in bad faith to divert Web traffic seeking the Complainant’s Web site.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
Therefore the Panel shall decide this proceeding on the basis of Complainant’ submissions, drawing such inferences from the Respondent’s default that are considered appropriate according to paragraph 14(b) of the Rules.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has provided the Panel with evidence of ownership of many trademark registrations all over the world consisting of or comprising the sign DOS EQUIS.
The Panel finds that the disputed domain name is therefore identical to the trademarks owned by the Complainant.
In comparing the Complainant’s marks to the Domain Name with reference to it should be taken into account the well established principle that the suffixes, including the generic top level domains, may be excluded from consideration as being merely a functional component of the domain name. See Rollerblade, Inc. v. McCrady, WIPO Case No. D2000-0429 “the specific top level of the domain name such as ‘.net’ or ‘.com’ does not affect the domain name for the purpose of determining whether it is identical or confusingly similar”; Chevy Chase Bank, F.S.B. v. Peter Ojo, WIPO Case No. D2000-1770 “the accused domain name is legally identical to Complainant’s trade name CHEVY CHASE BANK”).
The Panel finds that the Complainant has therefore proven that the disputed domain name is identical to the DOS EQUIS trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant must make a prima facie showing that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name. The Respondent may establish a right or legitimate interest in the disputed Domain Name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(a) that it has made preparations to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to the dispute; or
(b) that it is commonly known by the Domain Name, even if it has not acquired any trademark rights; or
(c) that it intends to make a legitimate, non-commercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the domain name according to paragraph 4(a) of the Policy is quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, it is sufficient that the Complainant shows prima facie evidence in order to shift the burden of proof on the Respondent. If a respondent fails to demonstrate rights and legitimate interests in the domain name in accordance with paragraph 4(c) of the Policy or on any other basis, a Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110, Met America Mortgage Bankers v. Whois ID Theft Protection, NAF Case No. 852581).
In the present case, by not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain names.
There is no relation, disclosed to the Panel, between the Respondent and the Complainant and Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use Complainant’s trademarks and name under any circumstance and to sell Complainant’s products.
Moreover, the Panel finds that the Respondent, whose true identity has apparently been obscured by a privacy shield, has not shown that it is commonly known by the disputed domain name (see e.g., Fry’s Electronics, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1435).
Furthermore, there is no indication before the Panel that the Respondent has made preparations to use the domain name in connection with a bona fide offering of goods or services or intends to make a legitimate, non-commercial or fair use of the domain name.
The Panel notes that the domain name was, at the time of the filing of the Complaint, and still is pointing to a sponsored pay-per-click website aimed only at directing visitors to competing third-party commercial websites.
The Panel finds that such use does not constitute a bona fide offering of goods or services or a legitimate, non-commercial use of the domain name under the Policy as indicated, inter alia, in Sports Holdings, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1146, where the panel stated: “the evidence in the Complaint indicates that the website at the disputed domain name is commercial in the sense that it appears to provide links to other sites being competitors of the Complainant, and of an apparently commercial nature from which the Respondent presumably derives or intends to derive profit. Such use does not constitute a legitimate non-commercial or fair use of the disputed domain name by the Respondent within the meaning of Paragraph 4(c)(iii) of the Policy.”
Furthermore, the Panel notes that the Respondent’s website also generates various pop up advertisements for third party websites and finds that such use does also not constitute a bona fide offering of goods or services or a legitimate, non-commercial use of the contested domain name (see, inter alia, Yahoo!, Inc. v. Cupcake Patrol and John Zuccarini, WIPO Case No. D2000-0928; Ticketmaster Corporation v. Amjad Kausar, WIPO Case No. D2002-1018; Cox Holdings, Inc. v. Gary Lam,WIPO Case No. D2004-0931).
The Panel finds that Respondent have no rights or legitimate interests in respect of the disputed domain names, in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that the holder 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 that Complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered 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 holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.
As to bad faith at the time of registration, the Panel notes that in light of use of the trademark since as early as 1915, the amount of advertising and sales of Complainant’s products worldwide, the Respondent was or should have been aware of the Complainant’s trademarks.
Furthermore, the Panel observes that the contested domain name points to a parking page with a number of links related to alcoholic beverages such as wine, champagne, and particularly beer which is the main product of the Complainant, this being an additional element indicating that the Respondent was well-aware of the Complainant’s trademarks.
The Panel, in accordance with previous decisions issued under the Policy, is of the opinion that actual knowledge of the Complainant’s trademark at the time of the registration of the disputed domain names is to be considered an inference of bad faith (see Parfums Christian Dior v. Javier Garcia Quintas and C, WIPO Case No. D2000-0226).
The Panel finds that Internet users, in light of the content of the web page linked to the domain name at issue, are likely to be misled on the source, sponsorship, affiliation, or endorsement of the Respondent’s website and that the Respondent profits from such confusion by earning pay-per-click revenues (see, inter alia, Manheim Auctions Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1044, Fry’s Electronics, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1435, Barry D. Sears, Ph.D. v. YY / Yi Yanlin, WIPO Case No. D2007-0286).
The Panel therefore finds paragraph 4(b)(iv) of the Policy to be applicable in this case since the Respondent has attempted, and probably succeeded, in attracting Internet users to a website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s services.
As stated in Sports Holdings, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1146: “The Panel notes that there has been no Response filed in these circumstances, and it is open for the Panel to infer a prima facie case of bad faith registration. The Panel also notes that the Respondent has used the present domain name in a commercial website. The evidence before the Panel indicates that the Respondent has used (or allowed the use) of the domain name for the purpose of some apparently commercial nature from which the Respondent (or a related third party) presumably derives or intends to derive revenue. This is not conduct consistent with registration and use in good faith.”
While there could be legitimate purposes for which a privacy service may be used, under the circumstances of this case the Panel considers the apparently incomplete or even false information originally provided by the Respondent on the Whois to be an additional circumstance evidencing the bad faith of the Respondent concurring with the views expressed, inter alia, in Steelcase Development Corporation v. Admin, Domain, WIPO Case No. D2005-1352 stating that the use of false contact information by the Respondent is a further indication of bad faith (Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775).
In view of the above, the Panel finds that the Respondents have registered and used the domain names in bad faith, in accordance with paragraph 4(a)(iii) 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.
Luca Barbero
Sole Panelist
Date: June 19, 2007
Full & Egal Universal Law Academy