The Complainant is Millicom International Cellular S.A. of Luxembourg, represented by Anne-laure Bernard, Luxembourg.
The Respondent is PGI Holding of Quebec, Canada. 2. The Domain Names and Registrar
The disputed domain names and are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 31, 2014. On February 3, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same date, 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.
On February 11, 2014, the Respondent submitted an email communication in French, requesting whether the communications could be translated into French. On February 12, 2014, the Center acknowledged receipt and informed the Respondent that the language of the proceeding is English.
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 February 12, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 4, 2014. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on March 5, 2014.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on March 12, 2014. 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, amongst others, of the following trademark registrations:
- Bolivian Trademark registration No. 49626-C/56703-A for MILLICOM filed on July 20, 1989 and registered on February 27, 1989 and successively renewed, to cover telecommunication services in class 38 (Annex 5 to the Complaint); and
- Chilean Trademark registration No. 873247 for MILLICOM registered on August 12, 1999 to cover telecommunication services in class 38 (Annex 5 to the Complaint).
The disputed domain names and were registered January 31, 2013 and February 1, 2013, respectively. Currently parked pages resolve from the disputed domain names. 5. Parties’ Contentions A. Complainant
The Complainant asserts that it is a leading telecommunications operator dedicated to the emerging markets in Latin America and Africa, operating in 15 countries, employing more than 10,000 people and rendering services to over 45 million customers. It had a revenue in 2011 of USD 2.09 billion.
The Complainant further asserts that the disputed domain names infringe its prior trade name, domain names and registered trademark MILLICOM (Annex 5 to the Complaint).
According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain names given that:
(i) the Respondent is not authorized to use the MILLICOM trademark, nor it appears to own any trademarks associated with the MILLICOM trademark;
(ii) the Respondent has not been authorized by the Complainant to use the trademark MILLICOM and there is no association, affiliation or business relationship between the Complainant and the Respondent;
(iii) the Respondent is not known and has never been known as MILLICOM; and
(iv) the Respondent has not made any legitimate offering of goods or services through the disputed domain names, merely having them parked on sponsored pay-per-click webpages, so as to capitalize on the goodwill of the Complainant and its trademarks. Such use does not characterize a bona fide offering of goods or services, or a legitimate noncommercial or fair use without intent for commercial gain.
Furthermore, the Complainant asserts that, in an attempt to solve the matter amicably, it contacted the Respondent who offered to sell the disputed domain name for USD 10,000.00 (Annex 12 of the Complaint).
Lastly, in the Complainant’s view, further evidence of bad faith use and registration of the disputed domain names by the Respondent is that the Respondent is a domain name speculator, having registered 43 other domain names (Annex 11 to the Complaint) that correspond to third parties names, brands and businesses in Africa, and specially Senegal, where the Complainant operates. B. Respondent
The Respondent did not formally reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(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 has been registered and is being used in bad faith.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(i) of the Policy.
In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. A. Identical or Confusingly Similar
The Complainant has established its rights in the MILLICOM trademark, duly registered in several countries (Annex 5 to the Complaint).
The Panel finds that the disputed domain names and reproduce the Complainant’s trademark in its entirety. The first element of the Policy has therefore been established. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non‑exclusive list of circumstances that indicate the Respondent’s rights to or legitimate interests in the disputed domain name. These circumstances are:
(i) before any notice 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 (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired 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, in not formally responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules (see e.g. Banco Bradesco S/A v. B Private Registrant, A Happy DreamHost Customer,WIPO Case No. D2010-2108, ). Nevertheless, the burden is still on the Complainant to make a prima facie case against the Respondent.
In that sense, the Complainant indeed states that it has not licensed or otherwise permitted Respondent to use the MILLICOM trademark in the disputed domain names, nor is there any sort of affiliation, sponsorship or business relationship between the Complainant and the Respondent.
Also, the absence of any indication that the Respondent owns registered trademarks or trade names corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain names that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain names, corroborate with the Panel’s finding of the absence of rights or legitimate interests.
Another element to be taken into account is the parking of the disputed domain names in connection with pay-per-click websites which characterizes the Respondent’s intent of commercial gain by misleadingly diverting the Complainant’s consumers and merely earning revenues from the advertisements and links that solely exist in view of the association with the Complainant’s trademark and the disputed domain names.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain names. C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in the use of the disputed domain name, with an intentional attempt to attract, for commercial gain, Internet users to the 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 website or location or of a product or service on the website or location.
In this case, (i) the offer for sale for USD 10,000.00 of one of the disputed domain names by the Respondent to the Complainant (Annex 12 to the Complaint), (ii) the use of the disputed domain names in connection with parked pay-per-click websites and (ii) the existence of 43 other domain names registered by the Respondent which reproduce or infringe third parties names or trademarks (Annex 11 to the Complaint) corroborate a finding of bad faith in the registration and use of the disputed domain names.
Also, as already mentioned, the Respondent did not file any formal response to the Complaint, failing thereby to invoke any circumstance which could demonstrate its good faith in the registration or use of the disputed domain name.
For the reasons stated above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use pursuant to 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 names and be transferred to the Complainant.
Wilson Pinheiro Jabur
Sole Panelist
Date: March 18, 2014
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