WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Mundo Joven Travel Shop, S.A. de C.V. v. NET Technologies / Ricardo Barrón Case No. D2008-1292 1 The Parties
The Complainant is Mundo Joven Travel Shop, S.A. de C.V., represented by Joel A. Gómez Treviño, Mexico City, Mexico.
Respondent is NET Technologies / Ricardo Barrón, Mexico City, Mexico. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2008. On August 25, 2008, the Center transmitted by email to Network Solutions, LLC, a request for registrar verification in connection with the domain name at issue. On August 26, 2008, Network Solutions, LLC, transmitted by email to the Center its verification response confirming that 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”), 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 Respondent of the Complaint, and the proceedings commenced on September 3, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 23, 2008. Respondent did not submit any Response. Accordingly, the Center notified Respondent's default on September 24, 2008.
The Center appointed Kiyoshi I. Tsuru as the sole panelist in this matter on October 1, 2008. 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
Complainant is the holder, inter alia, of the following trademark registrations:
TRADEMARK REG. No. Class
(Int'l) APPLICATION DATE COUNTRY
MUNDO JOVEN
995,601
36
May 29, 2007
Mexico
MUNDO JOVEN TRAVEL SHOP (and design)
616,398
18
October 19, 1998
Mexico
MUNDO JOVEN TRAVEL SHOP (and design)
616,399
25
October 19, 1998
Mexico
CLUB MUNDO JOVEN
629,081
41
September 21, 1999
Mexico
MUNDO JOVEN TRAVEL SHOP (and design)
630,712
41
September 21, 1999
Mexico
PASAPORTE MUNDO JOVEN
740,271
36
December 19, 2001
Mexico
PASAPORTE MUNDO JOVEN
740,270
42
December 19, 2001
Mexico
MUNDO JOVEN ÚLTIMO MINUTO
758,176
39
July 12, 2002
Mexico
MUNDO JOVEN TRAVEL SHOP
121,597
39
December 27, 2002
Guatemala
RESERVA Certificate No. APPLICATION DATE COUNTRY
CLUB MUNDO JOVEN
04-2003-051213294200-101
October 30, 2006
Mexico
The disputed domain name was registered by Complainant on March 13, 1998. However, Respondent became the registrant of this domain name, apparently on June 6, 2008. 5. Parties' Contentions A Complainant
Complainant argues the following:
I. The domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
- That the disputed domain name is identical or confusingly similar to Complainant's trademarks MUNDO JOVEN, MUNDO JOVEN TRAVEL SHOP (and design), CLUB MUNDO JOVEN, etc. (see Complainant's trademark chart in section 4, supra).
- That Complainant has common law trademark rights arising from the use of the unregistered domain name .
- That since 1995, Complainant has conducted business using the mark MUNDO JOVEN and the domain name in its 23 stores located in several cities and states in Mexico.
- That the distinctive element on Complainant's registered trademarks are the terms “Mundo Joven” (and cites TUI AG v. igor golub, WIPO Case No. D2007-1410).
II. Respondent has no Rights or legitimate interests in respect of the domain name;
- That Respondent has not been commonly known by the domain name in dispute.
- That there is no evidence of Respondent's use of the domain name in connection with a bona fide offering goods or services.
- That Respondent has not acquired trademark or service mark rights in connection with the disputed domain name.
III. The domain name was registered and is being used in bad faith.
- That the contested domain name was registered for the first time on March 13, 1998 by the Complainant.
- That the disputed domain name has been renewed and paid for by Complainant, covering the period 1998-2008.
- That on July 7, 2008, a Complainant's employee received some anonymous emails, stating the following:
- That as of June 6, 2008, the disputed domain name was no longer held by Complainant.
- That the current holder of said domain name was NETtechnologies.
- That the real name of the domain name holder was one Fabián Huerta and that this person was planning to require Complainant to pay a large sum of money in exchange for the return of the domain name.
- That on August 12, 2008, the same employee of Complainant received another email stating that Mr. Ricardo Barrón was the current owner of the disputed domain name, and that said Ricardo Barrón is the cousin of Mr. Fabián Huerta.
- That the unauthorized use of Complainant's marks suggests opportunistic bad faith (and cites Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163).
- That Mr. Fabián Huerta had worked for Complainant since October 15, 2007, as a freelance webmaster for Complainant´s website parked at ; that. Complainant decided to later on terminate its professional relationship with Mr. Huerta.
- That Mr. Fabián Huerta was not satisfied with the settlement payment received from Complainant.
- That either Mr. Fabián Huerta acted in complicity with Mr. Ricardo Barrón, or Mr. Huerta is using the name of Mr. Barrón as an alias, to conceal his identity.
- That Mr. Fabián Huerta exercised some control over the Network Solutions account regarding , which resulted in the highjacking not only of this domain name, but also other domain names previously held by Complainant.
- That on July 17, 2008, Complainant received an email from Network Solutions notifying that they had received a request by NET Technologies to remove the Technical Contact of .
- That on July 22, 2008, Complainant sent a letter to Network Solutions regarding the modifications to the disputed domain name's WHOIS record; that Network Solutions replied informing Complainant that nothing could be done.
- That Complainant then requested a “temporary lock”, which measure was implemented by Network Solutions.
- That on August 19, 2008, Complainant sent a Cease and Desist Letter to Respondent, giving him a 48 hour term to surrender the domain name to the Complainant; that as of today, Respondent has not answered such request.
- That Complainant is a well-known travel agency for young people in Mexico, which has been doing business under the trademark MUNDO JOVEN since 1998.
- That since 1998, Complainant has applied for and obtained 10 registered trademarks that are either identical or confusingly similar to the disputed domain name.
- That Complainant registered the domain name in 1998 and has been paying its renewal since then, the last payment of which was made on February 8, 2008, to cover nine years.
- That there is enough circumstantial evidence to infer that Respondent (Ricardo Barrón) is Fabián Huerta, former webmaster of the Complainant, who used his control over the Network Solutions account to highjack 10 domain names that belong to Complainant. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
In accordance with the Policy, paragraph 4(a), Complainant must prove that:
(i) the domain name in question is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
In the administrative proceeding, Complainant must prove that each three of these elements are present.
As Respondent has failed to submit a Response to the Complaint, the Panel may choose to accept as true all of the reasonable allegations of the Complaint. See Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk,WIPO Case No. D2002-0487; Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. A. Identical or Confusingly Similar
Complainant's trademark MUNDO JOVEN is identical to the disputed domain name . Complainant's trademarks that incorporate MUNDO JOVEN (see section 4, supra) are confusingly similar to the domain name .
The addition of the generic top-level domain “.com” is immaterial for purposes of the Policy. To carry into effect the similarity analysis, a Panel must not take into account the generic top-level domain (gTLD) “.com”, because such gTLD has no legal significance. See Ahmanson Land Company v. Vince Curtis, WIPO Case No. D2000-0859 (citing in turn Monty and Pat Roberts, Inc. v. J. Bartell,WIPO Case No. D2000-0300, J.P. Morgan & Co., Incorporated and Morgan Guaranty Trust Company of New York v. Resource Marketing,WIPO Case No. D2000-0035; see also Pomellato S.p.A. v. Richard Tonetti,WIPO Case No. D2000-0493; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429 and Sony Kabushiki Kaisha v. Inja, Kil,WIPO Case No. D2000-1409).
The first requirement of the Policy has been met. B. Rights or Legitimate Interests
The following are examples of circumstances where a Respondent may have rights or legitimate interests in a contested domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c)).
It is important to point out that Complainant's uncontested allegations show that this domain name had been originally registered by Complainant itself. Complainant argues that the relevant domain name registration, or that Complainant's account provided by Network Solutions was hacked by Respondent. Complainant does not explain whether Respondent controlled the passwords to Complainant's account, or this domain name registration. What can be derived from the record, is that Complainant had registered the contested domain name, and that earlier this year Respondent took control over it, without any authorization from Complainant. Taking control over a domain name that reflects the trademarks of another, without the authorization of the rights holder, cannot be deemed to constitute good faith. See, mutatis mutandis, Société Air France v. Bing G Glu, WIPO Case No. D2006-0834.
Respondent has not submitted any justification for having obtained the disputed domain name after it had been renewed by the Complainant (according to Complainant's uncontested arguments), or for having changed the administrative contact of said domain name. This type of conduct cannot be considered as legitimate or fair. Respondent's conduct could generate a risk of confusion regarding the existence of an apparent association, origin or sponsorship of Complainant, in connection to the domain name of Respondent. See mutatis mutandis, Philip Morris Incorporated v. Alex Tsypkin,WIPO Case No. D2002-0946.
According to Complainant's uncontested allegations, Respondent has been actively engaging Complainant, regarding this domain name. This matter, added to the fact that Complainant's trademarks are duly registered in Mexico, and that said marks are publicized in said jurisdiction, leads this Panel to presume that Respondent knew of Complainant's trademarks when he took over i.e., registered the contested domain name.
Respondent has not submitted any evidence showing that Complainant has not granted any authorization to transfer or register the disputed domain name.
The record contains no evidence showing that Respondent has been commonly known by the disputed domain name.
Respondent has not filed any piece of evidence showing any rights or legitimate interests showing any justification to legitimately use the disputed domain name under paragraph paragraph 4(c) of the Policy. See Patek Philippe S.A. v. Kupfer Jewelry Inc., WIPO Case No. D2008-1193.
Further, Respondent has not proven that he has any prior rights or legitimate interests in the disputed domain name.
The second requirement of the Policy has been met. C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the following circumstances shall be evidence of registration and use in bad faith:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 your website or location or of a product or service on your website or location.”
The disputed domain name seems to keep resolving to Complainant's web site. The issue is that Complainant is not formally the holder of the disputed domain name, and thus has no control over it. Absent the temporary lock imposed by the Registrar, nothing would prevent Respondent from changing the DNS information and disrupting the resolution of this domain name, therefore disrupting the business of Complainant. The record does not show that Complainant and Respondent are competitors, but a disruption to Complainant's activities caused by a disruption to its web site, and the unauthorized use of a domain name that reproduces and/or entirely incorporates Complainant's trademarks, could occur if the temporary lock was lifted.
Since there is no justification on the record regarding Respondent's acquisition of the disputed domain name, which reproduces and/or incorporates Complainant's trademarks which are considerably used in Mexico, where Respondent allegedly is located, and since Respondent has not submitted any evidence to prove his rights or legitimate interests, the Panel cannot find any good faith factor in the abstention or use of the domain name, or any explanation of why Respondent has adopted this conduct.
The uncontested claims and documents submitted by Complainant regarding some correspondence with Respondent could result in the presumption that the Respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring it to Complainant, for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the domain name. This presumption cannot be rebutted for lack of a Response submitted by Respondent.
Complainant claims not to have authorized Respondent to use its trademarks. The unauthorized use of Complainant's marks suggests opportunistic bad faith. See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163). See also Western Florida Lighting, Inc. v. Samantha Ramirez, SamiRami, SESCO Lighting, Inc., and Cynthia Parker-Chillemi, WIPO Case No. D2008-1122; Admiral Insurance Services Limited v. Mr. Adam Dicker,WIPO Case No. D2005-0241; Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited,WIPO Case No. D2004-0753.
Therefore, the registration and use of this domain name by Respondent cannot be deemed to have been done in good faith.
The third element of the Policy has been met. 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 Complainant.
Kiyoshi I. Tsuru
Sole Panelist
Dated: October 15, 2008
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