The Complainant is Universidad Autónoma de Nuevo León of San Nicolas de los Garza, Nuevo Leon, Mexico, represented internally.
The Respondent is Leszek Zarebinski of Gibraltar, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with PSI-USA, Inc. dba Domain Robot (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2013. On March 6, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 7, 2013, the Registrar transmitted by email to the Center its verification response confirming that the 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” 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 26, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 15, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 16, 2013.
The Center appointed William R. Towns as the sole panelist in this matter on April 22, 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. 4. Factual Background
The Complainant is a public institution of higher learning in the State of Nuevo León, Mexico, founded in 1933, which serves to create, preserve and disseminate knowledge through teaching, research, social service, culture and sport for the benefit of the community. The Complainant is the owner numerous national registrations in Mexico for the trademarks TIGRES UANL and TIGRES U UANL. These trademarks are used with the Complainant’s well-known professional football (soccer) club, which was founded in 1960. In addition to numerous trademark registrations issued to the Complainant by the Mexican Institute of Industrial Property (IMPI), the Complainant has submitted documentation from The National Institution of Copyrights in Mexico (INDAUTOR) indicating that TIGRES UANL has become a well-known mark with respect to the professional football club.
The Respondent is the current registrant of the disputed domain name , according to relevant WhoIs data maintained by the concerned Registrar. The disputed domain name resolves to a parked page featuring advertising links, including links to websites selling soccer equipment, soccer uniforms, and related merchandise. Screen shots submitted by the Complainant as annexes to the Complaint indicate that the disputed domain name is also being offered for sale on the website. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name is identical to the Complainant’s TIGRES UANL mark, and confusingly similar to the Complainant’s TIGRES U UANL mark. The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name, because the Respondent has not been commonly known by the disputed domain name and has not been authorized by the Complainant to use the Complainant’s marks. According to the Complainant, the Respondent is using the disputed domain name solely in an attempt to realize illicit monetary gain by creating a false association between the Respondent’s website and the Complainant’s marks, and thus is not using the disputed domain name in connection with a bona fide offering of goods are services, or otherwise making a legitimate noncommercial or fair use of the disputed domain name. The Complainant maintains that TIGRES UANL is a well-known mark, and concludes that the Respondent registered and is using the disputed domain name in bad faith to profit from the fame and reputation of the Complainant’s TIGRES UANL mark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 -177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a 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.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(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 with respect to the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
Cancellation or transfer of the disputed domain name is the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000‑0270. B. Identical or Confusingly Similar
The Panel finds that the disputed domain name is identical to the Complainant’s TIGRES UANL mark and confusingly similar to the Complainant’s TIGRES U UANL mark. In considering this issue, the first element of the Policy stands essentially as a standing requirement. The threshold inquiry under the first element of the Policy is largely framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar. In this case, the disputed domain name is identical to the TIGRES UANL mark and differs from the TIGRES U UANL mark only by the omission of the letter “u”. The Panel finds this is not sufficient to dispel the confusing similarity of the disputed domain name to the Complainant’s mark.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. The disputed domain name is identical to the Complainant’s TIGRES UANL mark and confusingly similar to the Complainant’s TIGRES U UANL Mark. It is undisputed that the Respondent has not been authorized to use the Complainant’s mark or commonly known by the disputed domain name. The Respondent notwithstanding has registered and is being used the disputed domain name with a parking page containing advertising links to third-party websites, some of which offer soccer equipment, uniforms, and other merchandise.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the disputed domain name, even if he has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
Based on the record in this proceeding, the Panel considers it more likely than not that the Respondent was aware of the Complainant and had the Complainant’s TIGRES UANL mark in mind when registering the disputed domain name. The Panel finds that the Respondent most likely registered the disputed domain name in order to exploit and profit from the Complainant’s trademark rights through the creation of Internet user confusion. Internet users likely would expect the dispute domain name to be linked to the Complainant’s website or another website that is affiliated with, or has the endorsement or sponsorship of, the Complainant. See Levantur, S.A. v. Media Insight,WIPO Case No. D2008-0774.
The record before the Panel does not reflect the Respondent’s use of, or preparations to use, the disputed domain name in connection with a bona fide offering of goods or services, given the Respondent’s overriding intent to exploit and profit from the goodwill and repute of the Complainant’s marks. Nor, in the circumstances of this case, can it be said that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers. Further, as noted above, the Respondent has not been commonly known by the disputed domain name or authorized to use the Complainant’s marks. In short, and in the absence of any reply by the Respondent, the record evinces that the Respondent has no rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel finds that the Respondent more likely than not was aware of the Complainant and had the Complainant’s marks in mind when registering the disputed domain name. In the absence of any reply by the Respondent, the record evinces that the Respondent’s primary motive in relation to the registration and use of the disputed domain name was to capitalize on, or otherwise take advantage of, the Complainant’s trademark rights through the deliberate creation of Internet user confusion. The record on balance reflects that the Respondent registered and is using the disputed domain name in bad faith to intentionally attract for commercial gain Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship or affiliation. See E, Inc. v. Ult. Search Inc.,WIPO Case No. D2001-1319.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: May 7, 2013
UANL is an acronym for Universidad Autónoma de Nuevo León.
See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2.
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