The Complainant is Grupo Vitalmex, S.A. de C.V., of Mexico City, Mexico, represented by Tsuru Morales Isla Abogados, S.C., Mexico.
The Respondent is Armin Werner of Minden, Germany, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with Key-Systems GmbH dba (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 9, 2015. On January 9, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 9, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing his contact information.
According to information received from the Registrar, the language of the registration agreement for the disputed domain name is German. Accordingly, the Complainant was requested to provide at least one of the following: 1) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; or 2) to submit the Complaint translated into German; or 3) to submit a request for English to be the language of the administrative proceedings. On January 22, 2015, the Center received a request for English to be the language of the administrative proceedings, to which the Respondent did not reply.
In response to a request for confirmation of the Registrar by the Center, the Complainant submitted its confirmation to the Center on January 28, 2015, stating that the information in the Complaint on the Registrar is correct and corresponds with its files.
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 January 29, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 18, 2015. The Center received an informal communication in English on February 17, 2015 from the Respondent. Based on the Respondent’s communication, the Center informed the parties about the possibility to suspend the proceedings to explore a possible settlement between the parties. On February 21, 2015, the Center received a signed document from the Complainant requesting the suspension of the proceedings. Upon receipt of a re-institution request from the Complainant dated March 14, 2015, the Center re-instated the proceedings on March 16, 2015, and indicated that it would proceed to Panel appointment.
The Center appointed Tobias Zuberbühler as the sole panelist in this matter on March 25, 2015. 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.
After the appointment of the sole panelist, the Respondent submitted several informal communications by email. On April 7, 2015, the Respondent sent an email to the Center, stating among other things that he had been hired by the Complainant about ten years ago and that the Complaint could have been avoided. The Respondent also explained the reasons why he had registered the disputed domain name. On April 9, 2015, the Panel issued an Order giving the Respondent the opportunity to explain his position and provide any submissions by April 13, 2015. The Panel also invited the Complainant to submit any comments in this respect by April 15, 2015.
On April 12, 2015 the Respondent made the same submissions again, but added that the Complainant owed him EUR 19,864.00 plus interest since May 4, 2006 for the services rendered to the Complainant. The Complainant answered on April 15, 2015 that the settlement price was far too high and not acceptable. On April 17, 2015, the Respondent submitted an answer by email stating again that the Complainant owed him compensation for work he did in the past for the Complainant, explaining that he was not a domain grabber but reserved the disputed domain name to secure his debt claim. 4. Factual Background
The Complainant is Grupo Vitalmex, S.A. de C.V.., a company established in 1976 that provides goods and services in relation to health care and health care institutions. The Complainant operates worldwide.
The Complainant is the owner of several trademarks in connection with the name VITALMEX. The trademark VITALMEX (stylized) with the No. 722351 was filed on August 3, 2001 in Mexico, and the registration has been granted on October 31, 2001. The trademark is exclusively licensed to the Complainant.
The Respondent is an IT specialist hired by the Complainant around 10 years ago for implementing software to create and manage the master data for all Vitalmex’s fixed assets used inside hospitals, and to control the inventory of the mentioned assets.
The disputed domain name was registered on March 14, 2005. The Respondent appears to be using the disputed domain name to profit from a pay-per-click program, advertising among others similar goods and services as the Complainant. 5. Parties’ Contentions A. Complainant
The disputed domain name is identical or closely similar to the Complainant’s trademark. The term “vitalmex” is an arbitrary or fantasy term developed by the Complainant. All relevant information in the World Wide Web in connection with the term “vitalmex” is related to the services and goods of the Complainant. The sole distinction between the disputed domain name and the Complainant’s trademark VITALMEX and the Complainant’s domain name is the use of a different top level domain.
The Respondent has no rights or legitimate interest in respect of the disputed domain name. The name of the Respondent, Armin Werner, cannot be associated with the term “vitalmex”. The disputed domain name directs to a website used as a parking site in which the Respondent tries to profit from a “pay-per-click” structure. Moreover, the Respondent has not registered any trademark in connection with the term “vitalmex”. Nor has the Complainant authorized the Respondent to use its trademarks. In addition, the Respondent had full knowledge of the registered trademarks and the existence of the Complainant, as he had been hired around ten years ago to implement software for the Complainant.
The disputed domain name was registered and is being used in bad faith. The Respondent registered the disputed domain name after having had a commercial relationship with the Complainant and knowing about the Complainant’s registered trademarks. The Respondent’s use of the disputed domain name to profit from a “pay-per-click” model that contains sponsored links of competitors of the Complainant offering competing products and services shows that the Respondent uses the domain name in an abusive way, especially since he knew about the Complainant and its registered trademark. B. Respondent
The Respondent did not formally reply to the Complainant’s contentions, but made several submissions by email. According to the Respondent, he had an “ERP / IT consulting project” for the Complainant, and he claims that the Complainant owes him a salary of EUR 19,864.00 plus interests since May 4, 2006 for the services rendered to the Complainant around ten years ago.
The registration of the disputed domain name has been made “for Vitalmex to be on the safe side”. The Complainant had the chance to settle the matter by transferring EUR 10,062.50 to the Respondent and thereby receiving the disputed domain name. The Respondent claims that he acted in the best interest of the Complainant by registering the disputed domain name because the Complainant’s top management had no interest in it. 6. Discussion and Findings
The Complainant must establish under paragraph 4(a) of the Policy that1 :
i) the disputed domain name is identical or confusingly similar to a trademark or servicemark in which it has rights;
ii) the Respondent has no rights or legitimate interests in the disputed domain name; and
iii) the disputed domain name has been registered and is being used in bad faith by the Respondent. A. Language of the Proceedings
Paragraph 11(a) of the Rules provides as follows:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The Registrar has confirmed that the language of the Registration Agreement is German. The Complainant stated that, to the best of its knowledge, the language of the Registration Agreement was English. As this is not the case, the statement of the Complainant and the supportive evidence provided have to be qualified as a request that English should be the language of the proceedings. As the Respondent’s submissions were in English and there does not appear to be any disadvantage to the Respondent in conducting the proceedings in this language, the Panel concludes, in accordance with paragraph 11 of the Rules, that English shall be the language of these proceedings. B. Identical or Confusingly Similar
The Complainant has proven that the trademark VITALMEX was registered in its name in 2001. The Respondent registered the disputed domain name on March 14, 2005. Apart from the generic Top-Level Domain suffix “.com”, the disputed domain name is identical to the Complainant’s trademark.
The Panel finds that the Complainant has therefore fulfilled paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
Panels have adopted the approach that where a complainant establishes a prima facie case that the respondent has no rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to establish rights or legitimate interests in the disputed domain name (see Paris Hilton v. Deepak Kumar,WIPO Case No. D2010-1364).
The disputed domain name is being used by the Respondent for a “pay-per-click” service or at least some other form of third party advertising (see Paris Hilton v. Deepak Kumar,WIPO Case No. D2010-1364; Owens Corning v. NA,WIPO Case No. D2007-1143).
The Respondent claims that he registered the disputed domain name “in the best interest” of the Complainant to save them “a lot of trouble”. Moreover, the Respondent states that he was not willing to initiate legal proceedings against the Complainant based on the owed salary and therefore he “rather pursued business opportunities” to secure his salary.
It is evident that, by registering the disputed domain name with knowledge of the Complainant’s trademark rights, by using the disputed domain name for a “pay-per-click” structure and by trying to secure his own salary instead of starting legal proceedings, the Respondent has not shown any rights or legitimate interests in the disputed domain name. Moreover, there is no evidence that the Respondent has ever used VITALMEX or any similar trademark in offering services and goods or has registered the disputed domain name in connection with either bona fide commercial activities or other activities that would show any legitimate interest in, or fair use of, the Complainant’s trademark.
The Panel thus finds that the Complainant has fulfilled paragraph 4(a)(ii). D. Registered and Used in Bad Faith
Registering and using a domain name with the knowledge of an infringement of the Complainant’s trademark may, in appropriate circumstances, show bad faith. Furthermore, the Panel finds that the use of “pay-per-click” or link farm parking pages offering goods and services of competitors of the Complainant or providing links to such pages constitutes bad faith (see Donald J. Trump v. Mediaking LLC d/b/a Mediaking Corporation and Aaftek Domain Corp.,WIPO Case No. D2010-1404).
The Respondent registered the disputed domain name with the purpose of securing his salary for a project with the Complainant 10 years ago. This shows that the Respondent had full knowledge of the existence of the trademark VITALMEX.
In addition, the Respondent established a “pay-per-click” structure under the disputed domain name with links, among others, to direct competitors of the Complainant. He intentionally used the trademark of the Complainant to profit from the Complainant’s reputation and generate commercial gain by creating confusion for Internet users through sponsored links.
Finally, the Respondent offered to sell the disputed domain name to the Complainant for a price substantially in excess of any reasonable out-of-pocket expenses associated with the disputed domain name.
Considering all of the above, the Panel finds that the Respondent’s bad faith under the paragraphs 4(b)(i) and (iv) of the Policy is sufficiently proven and that the Complainant has thus fulfilled 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.
Tobias Zuberbühler
Sole Panelist
Date: April 30, 2015
As the Panel’s power of decision is limited to disputes concerning domain names, the question whether the Complainant owes the Respondent EUR 19,864.00 plus interest since May 4, 2006 for his services rendered to the Complainant around ten years ago falls outside the scope of these proceedings.
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