The Complainant is David Guerra Flores of Guadalajara, Jalisco, Mexico, represented by Avahlegal, Mexico.
The Respondent is Carlos Pérez (aka Carlos Javier Pérez Sánchez) of Monterrey, Nuevo León, México, represented by De Hoyos Koloffon & Asociados, Mexico. 2. The Domain Name and Registrar
The disputed domain name is registered with R (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2013. On February 14, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 14, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing its contact details thereon. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on February 23, 2013.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 March 6, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 26, 2013. The Response was filed with the Center on March 25, 2013, on behalf of Carlos Javier Pérez Sánchez.
The Center appointed Reynaldo Urtiaga Escobar as the sole panelist in this matter on April 4, 2013. 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.
The proceedings are conducted in English as this is the language of the registration agreement for the disputed domain name. And also because the parties, who are taken to be Spanish native speakers, did not request that the Panel substantiate the proceedings in Spanish instead of English, as permitted by paragraph 11(a) of the Rules. 4. Factual Background
The Complainant avers to have independently devised, sometime during 2002, a business plan for the online distribution in Mexico of contact lenses from all different manufacturers under the trademark PUPILENTES.COM and its corresponding website.
Having failed to secure registration of the disputed domain name prior to the Respondent, the Complainant decided to register the following domain names , , , , , , , , all of which are redirected to an online store at “www. ”’, distributing contact lenses in Mexico.
The Complainant is the owner of Mexican trademark registrations Nos. 1084100 for 01800 PUPILENTES (filed on December 19, 2008, granted on February 12, 2009); 1162913 for MISPUPILENTES.MX (filed on May 17, 2010, granted on June 9, 2010); and 1249840 for PUPILENTES.COM (filed on November 3, 2010, granted on November 9, 2011) in international class 35 covering the following services: advertising, business management, business administration, and office functions. The latter trademark registration claims a date of first use in commerce as of August 22, 2002.
Additionally, the Complainant has registered a number of slogans including the word “pupilentes” with the Mexican Institute of Industrial Property (“IMPI”). The Complainant has also registered the name “” with the Mexican Copyright Office on January 17, 2013, as the title of a periodical webcast.
The Respondent is in the same business of the Complainant and claims to have started as early as 2001, to work on a prototype website for the marketing of contact lenses in Mexico.
The Respondent registered the disputed domain name on February 27, 2003. The disputed domain name has resolved, presumably since its registration, to an online store of contact lenses from a myriad of brands for delivery door-to-door within Mexico.
The Respondent was the owner of trademark registration No. 806601 PUPILENTES.COM (and design) (filed on June 11, 2003, granted on September 11, 2003) in international class 35 with respect to the following services: advertising, business management, business administration, and office functions. This trademark registration was cancelled for non-use by the IMPI on May 13, 2011, at the Complainant’s request.
It is undisputed that the parties are not acquainted with each other and that each party’s business model was developed separately. 5. Parties’ Contentions A. Complainant
The Complainant’s factual and legal contentions can be summarized as follows:
i. As early as August 22, 2002, the Complainant, along with a third party, retained the services of Mexican company K&B i Gran Formato, to devise a web portal for the online distribution of contact lenses from all manufacturers, under the brand PUPILENTES.COM, as well as to produce advertising materials thereon;
ii. The launch of the PUPILENTES.COM brand on the corresponding website was thwarted when the domain names and were acquired in bad faith by the Respondent in 2003;
iii. The Complainant has a higher right to use its registered trademark PUPILENTES.COM, which is also legally protected as a reservation of rights;
iv. The disputed domain name is identical to its trademark PUPILENTES.COM, and its counterpart reservation of rights, both of which the Complainant has been using uninterruptedly since 2002;
v. It is evident that the disputed domain name creates confusion to the Internet user, as the disputed domain name does not vary in any character or letter from the trademarks owned by the Complainant;
vi. The Respondent has no legitimate rights or interest in the disputed domain name as it no longer holds any registered mark or intellectual property right entitling it to use of the disputed domain name ;
vii. The Complainant has a better right to use the disputed domain name in light of its exclusive intellectual property rights in the term “” and also because the Respondent’s prior PUPILENTES.COM trademark was cancelled for non-use;
viii. The Respondent registered the disputed domain name in bad faith with the intention to attract for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s PUPILENTES.COM trademark as to the source, sponsorship, affiliation, or endorsement and by preventing the Complainant from reflecting its mark in the corresponding domain name;
ix. The disputed domain name was registered and is being used in bad faith by the Respondent, who is a direct competitor of the Complainant;
x. The Respondent has copied the Complainant’s business model, including a number of features such as the “01800” toll free number for the sale of contact lenses over the telephone and the free home delivery service. B. Respondent
The Respondent’s factual and legal contentions can be summarized as follows:
i. From 2001 through 2002, the Respondent, along with his father Javier Pérez Chavarria, worked with the Center for Research and Training in Educational Technology at the Instituto Tecnológico de Monterrey, Mexico (“ITESM”) to develop a website for the marketing of contact lenses, having produced a number of dummies and prototypes of the site for testing;
ii. At the beginning of 2003, Javier Pérez Chavarría engaged the services of Espacios de México, S. A. de C. V. to develop an online store of contact lenses, for which purpose the Respondent secured registration of the disputed domain name on February 27, 2003, and of the domain name on March 19, 2003;
iii. The Respondent’s registration of the disputed domain name predates Complainant ’s registration of and in 2008 for more than four years;
iv. The Complainant started to obtain trademark registrations over the word pupilentes as from 2008, that is more than five years after the disputed domain name was registered;
v. It is not true that the Complainant has a better legal standing to use the term “” since article 92 of the Mexican Industrial Property Act authorizes a third party to use in good faith someone else’s trademark prior to the latter’s filing date or declared date of first use in commerce;
vi. In relation to its former PUPILENTES.COM trademark, the Respondent notes that it never received notice of the proceedings enabling it to file evidence of use and maintain its trademark registration;
vii. Even when the Respondent’s trademark registration for PUPILENTES.COM expired, article 92 of the Mexican Industrial Property Act recognizes rights of first use in favor of the Respondent;
viii. Prior to receiving notice of this dispute or having knowledge of the Complainant’s existence, the Respondent has been operating uninterruptedly the online store at the disputed domain name for more than ten years in connection with a bona fide offering of goods or services;
ix. The Respondent did not register the disputed domain name in bad faith with the intention to attract for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s PUPILENTES.COM trademark as to the source, sponsorship, affiliation, or endorsement;
x. It was impossible for Respondent to have registered and used the disputed domain name in bad faith as early as 2003 since the Complainant’s PUPILENTES.COM mark was granted in November 9, 2011;
xi. The Complainant knew or should have known at the time of filing the Complaint that it would not be able to prove Respondent’s bad faith registration and use of the disputed domain name, which in turn warrants a finding of reverse domain name hijacking. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed in this administrative proceeding, the Complainant must prove that:
i. the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
ii. the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
iii. the disputed domain name was registered and is being used in bad faith.
These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable. A. Identical or Confusingly Similar
The gateway question under paragraph 4(a)(i) of the Policy is whether the disputed domain name is identical or confusingly similar to the Complainant’s trademark, not whether the website to which the disputed domain names resolve will confuse Internet users. See The Vanguard Group, Inc. v. John Zuccarini,WIPO Case No. D2002-0834 (a complainant need not to establish actual confusion because the test is objective, not subjective).
The Complainant proves to hold registered trademark rights in PUPILENTES.COM as of November 9, 2011, the date of registration of Complainant’s trademark in Mexico.
The Respondent alleges to have prior trademark rights in the term “”, but without expressly affirming or denying that the disputed domain name is identical to the Complainant’s PUPILENTES.COM trademark.
Even if the Complainant’s trademark registration took place more than eight years after registration of the disputed domain name, this is no bar to the PUPILENTES.COM trademark serving as the basis of the Complaint for the purpose of overcoming the first threshold of paragraph 4(a) of the Policy. See paragraph 1. 4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), setting out that registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity under the Policy.
Now, in comparing the Complainant’s trademark PUPILENTES.COM with the Respondent’s disputed domain name , the Panel finds that both signs are identical except for the difference in font size, which discrepancy is inconsequential as capital letters are not allowable in domain names.
It is thus unnecessary for the Panel to elucidate whether the types of Mexican intellectual property rights on which the Complaint is also based, namely the slogan registrations, and the so-called reservation of rights, may be relied upon as trademarks to support a claim under the Policy.
The Complainant has thus met the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the Respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). Paragraph 4(c) of the Policy provides that “any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate the Respondent’s rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
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.”
The Complaint rests on the proposition that the Complainant has a better right than Respondent to own and use the disputed domain name.
However, the Complainant’s submission is misplaced since the condition to be met under this head of the Policy is not that the Complainant holds better rights in the disputed domain name, but rather that the Respondent lacks any rights or legitimate interests whatsoever in the disputed domain name. See Borges, S. A., Tanio, S.A.U. v. James English,WIPO Case No. D2007-0477 (paragraph 4(a)ii) of the Policy requires only that the Respondent demonstrates a legitimate right, not necessarily better rights).
It follows that the Respondent may have a legitimate interest in the disputed domain name even without possessing any legal right, namely an intellectual property right, a civil right, a contract right, or a statutory right. See Armor Games Inc. v. --- A / A,WIPO Case No. D2009-1027 (“It seems to the Panel that at the date of registration of the disputed domain name the respondent had a comparable right or legitimate interest in the disputed domain name to the complainant”).
On the facts, the Respondent has demonstrated that it has continuously used the disputed domain name for some years now in connection with the sale and distribution in Mexico of contact lenses from third party manufacturers.
This use of the disputed domain name is clearly bona fide within the meaning of paragraph 4(c)i) above, because first, the distribution of contact lenses is a legitimate activity, as opposed to counterfeiting for example, and second, the Respondent’s online store became operational long before notice of the dispute was served on the Respondent, and in fact many years prior to the Complainant’s acquiring registered trademark rights in the term “pupilentes”.
The Panel notes that the Complainant did not assert, much less prove, to hold unregistered trademark rights accruing solely from its prior and continuous use of the term “” in commerce. What is more, the Panel is not convinced that the Complainant’s claimed date of first use in commerce of its PUPILENTES.COM trademark is August 22, 2002, since the only invoice submitted to prove that fact was not even issued by the Complainant, and therefore cannot demonstrate use of the trademark in question on the part of Complainant, and similarly, the said invoice cannot show that the PUPILENTES.COM trademark continued to be used in commerce after August 22, 2002.
Regardless of the foregoing, the Panel finds that the Respondent has a legitimate interest in the disputed domain name arising from the descriptiveness of the Complainant’s trademark. To that extent, the Respondent is entitled to rely on the dictionary meaning of the Spanish word “pupilentes”1, - translated into English as “contact lenses” -, to sell precisely contact lenses. See Pinnacle Intellectual Property v. World Wide Exports, WIPO Case No. D2005-1211 (the panel concluded that is an apt descriptive choice for respondent’s business, which is the sale of pharmaceutical products).
The fact that the Respondent no longer holds a trademark registration for PUPILENTES.COM is immaterial since the Respondent’s current legitimate interest in the disputed domain name is not premised on the existence or continuing validity of its once registered PUPILENTES.COM (and design) trademark but rather on the lawfulness of its business activity and on the legitimacy surrounding the use of a descriptive term.
Put differently, even if the Respondent failed to show to the IMPI that it used the trademark PUPILENTES.COM in connection with the services for which it was registered, it has certainly made a showing here that it has used the disputed domain name in relation to a bona fide offering of goods.
As a result, the Complainant has not made out its case under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Given its finding on the second element of paragraph 4(a) of the Policy, the Panel needs not make a finding on the third. D. Reverse Domain Name Hijacking
The Respondent requests the Panel to find that the Complainant engaged in Reverse Domain Name Hijacking (“RDNH”) since at the time of filing the Complaint, the Complainant knew or should have known that it would not be able to prove Respondent’s bad faith registration and use of the disputed domain name.
Paragraph 15(e) of the Rules provides that, if “after considering the submissions the panel finds that the Complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”.
Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
According to paragraph 4.17 of the WIPO Overview 2. 0, the onus of proving Complainant’s bad faith is on the Respondent, whereby mere lack of success of the Complaint is not itself sufficient for a finding of RDNH.
The Panel notes that on November 26, 2010, the Complainant lodged trademark cancellation proceedings against the Respondent before the IMPI, which proceedings turned out to be successful. The Complainant was thereafter granted the very same trademark registration for PUPILENTES.COM in international class 35 that was cancelled to Respondent for non-use. The Complainant’s vindication might have understandably bolstered its belief that it could also prevail in the instant administrative proceedings given its perceived better rights, and the loss of Respondent’s trademark rights in the term PUPILENTES.COM, which purportedly had validated use of the disputed domain name.
Because the Policy and the Rules are technical legal documents whose application largely depends on a thorough knowledge of their drafting history and ever-evolving case law, in the Panel’s opinion, while the Complainant did misconstrue the Policy, that does not mean that the Complainant took for granted that its Complaint was bound to fail. Had the Complaint been a sham, that would entail a deliberate waste of time, money, and human resources on the part of the Complainant, which scenario this Panel has difficulty to accept from a practical reality perspective.
In sum, the Panel finds that the Respondent has not sustained its burden with respect to paragraph 15(e) of the Rules, and accordingly, its request for a finding of reverse domain name hijacking is hereby denied. 7. Decision
For the foregoing reasons, the Complaint is denied.
Reynaldo Urtiaga Escobar
Sole Panelist
Date: April 22, 2013
1 The terms “pupilentes” and ”lentes de contacto” are customarily used in Mexico - where both parties are domiciled -, while “lentillas” is used in Spain.
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