Complainant is Diltex, S.A. de C.V. of Naucalpan de Juarez, Estado de Mexico, Mexico, represented by Thomae Maloney, S.C., Mexico.
Respondent is Domain Administration, Web Development Group Ltd of Kowloon, Hong Kong, People’s Republic of China / Privacydotlink Customer 269486 of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by UDRP POLICE DBS, United Kingdom of Great Britain and Northern Ireland (the). 2. The Domain Name and Registrar
The disputed domain name is registered with Uniregistrar Corp (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 19, 2015. On January 19, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on January 23, 2015, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 28, 2015.
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 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 Response was filed with the Center on February 9, 2015.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on February 16, 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. 4. Factual Background
Complainant is the owner of registration for the word, and word and design, trademark ILUSION on the trademark registry of the Mexican Institute of Industrial Property (IMPI),1 including word and design mark, registration number 303941, dated November 28, 1984, in international classes 5, 9, 10, 16, 18, 21, 25 (all kinds of clothing, except protective and animal clothing); 2 word and design mark, registration number 405044, dated February 2, 1992, in IC 25, and; word mark, registration number 883510, dated May 27, 2005, in IC 3, covering various laundry products. Complainant is the owner of registration for the word and design, and/or word trademark, ILUSION, in Belize, the Plurinational State of Bolivia, Canada, Colombia, Chile, China, Costa Rica, Ecuador, El Salvador, Guatemala, Haiti, Honduras, Nicaragua, Panama, Peru, United States of America (USA) and Uruguay. The earliest of the registrations outside Mexico is for El Salvador in 1989, Canada in 1995, Panama in 1996, Haiti in 1998, and Guatemala and the United States of America (stylized script) in 1999. These early registrations relate to clothing products.3
Complainant asserts that it was created in 1949 as a Mexican enterprise, initially providing women’s apparel (and particularly, underwear and lingerie), but has subsequently expanded to a full line of women’s apparel as well as home and beauty products. In 1985 it initiated catalog sales. In 1995 it expanded its business to the Hispanic markets of Central America and the United States of America. Complainant indicates that it is the leading seller of underwear and lingerie in Mexico, doing business through Internet commerce, and predominantly through independent salespersons relying on a catalog. According to Complainant, it currently operates 228 wholly-owned stores in Mexico, the United States of America and countries of Central America, as well as 2,000 points of sale in third-party retail stores. Complainant indicates that IMPI has recognized ILUSION as a famous trademark in Mexico, which automatically grants protection to all trademark classes of goods and services. Complainant has not specifically indicated the date upon which such recognition was accorded, although it indicates that such recognition was “recently declared”.
Complainant operates a commercial website at , the relevant domain name having been registered on February 16, 1999.4 Complainant is registrant of a number of additional country code domain names incorporating ILUSION.
Complainant has submitted substantial evidence of its Internet-based commercial offerings of women’s clothing and home products, as well as store locations.
Complainant has submitted substantial evidence that Respondent is an entity affiliated with Edward David Carrillo, a principal in a number of enterprises that have been the subject of previous UDRP proceedings. Also, the named Respondent entity “Web Development Group Ltd” does not appear to be registered in Hong Kong, China. Complainant has provided evidence that the address and contact information listed for Respondent in Hong Kong, China corresponds to that of a well-known operator of temporary offices (i.e. Regus).
According to the Registrar’s verification, Respondent is the registrant of the disputed domain name. According to that verification, the record of registration of the disputed domain name was created on November 13, 2000. The verification does not specify the identity of the initial or creation registrant.
Respondent and Complainant have submitted historical evidence of Respondent’s use of the disputed domain name in connection with a website. The evidence provided by the parties is consistent. In 2010, 2011, 2012, 2013 and 2014, there are basic starter pages without substantial content. In 2010, there is a listing of related searches appearing on a basic starter page, but none of the sponsored listings relate to clothing products (although certain of the “related searches” refer to women’s apparel (in Spanish)). Going back to 2006-7, there is a general parking/search page which bears no apparent relationship to women’s clothing. A search page for May 15, 2001, is unrelated to clothing. 5 As of the filing of the Complaint, the disputed domain name resolves to a nonfunctioning webpage (i.e. “This webpage is not available”).
Respondent has submitted a portfolio of its registered domain names that include several Spanish-language terms that appear to be “generic”, e.g. .
Respondent has submitted a number of dictionary references to the Spanish-language term “ilusión” that indicate the term is the same as the English-language term “illusion”.
Respondent has submitted evidence that a number of enterprises other than Complainant market and sell goods and services under the identifier “ilusión”, including for motorhomes, a dancing school, bedding and hotel services. Respondent has also submitted printouts from the WIPO Global Brand Database showing a number of registrations for the term “ilusión”, including by an enterprise other than Complainant in Mexico (Comex), inter alia, covering paints and resins (registration number 878767).
The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)). 5. Parties’ Contentions A. Complainant
Complainant alleges that it owns rights in the trademark ILUSION in Mexico and other countries, and that the disputed domain name is confusingly similar to that trademark. Complainant contends that its ILUSION trademark was recently declared famous as a matter of Mexican law.
Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent’s corporate name bears no relationship to the disputed domain name; (2) Complainant has never granted any license or other authorization to Respondent to use its trademark; (3) Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services; (4) despite having registered the disputed domain name on November 13, 2000, Respondent has made no serious preparations for use of the disputed domain name, and; (5) Respondent’s bad faith passive holding of the disputed domain name does not establish rights or legitimate interests.
Complainant contends that Respondent registered and is using the disputed domain name in bad faith because: (1) historical screenshots associated with the address of disputed domain name either did not resolve to any active webpage (constituting passive holding), or were associated with a pay-per-click (PPC) parking page and/or indicating the domain name was for sale; (2) passive holding may evidence bad faith: (3) lack of a bona fide offering of goods or services, by preventing registration by the owner of the trademark, may constitute bad faith; (3) Respondent has used the disputed domain name to divert Internet users to a PPC parking page and/or an indication of domain name for sale, indicating that Respondent registered the disputed domain name to sell it to Complainant for valuable consideration in excess of its out-of-pocket expenses, or to divert Internet users for commercial gain by taking advantage of Complainant’s trademark; (4) Respondent and its affiliated entities have taken substantial steps to disguise ownership of domain name registrations, including by making it difficult to locate Respondent, in order to speculate with domain names and prevent trademark owners from reflecting their names in corresponding domain names. Respondent or its affiliated entities has been the subject of a number of prior findings of abusive registration and use under the Policy.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant. B. Respondent
Respondent does not contest that the disputed domain name is identical to a trademark in which Complainant has rights.
Respondent argues that it has rights or legitimate interests in the disputed domain name because it is made up of a term which is generic in the Spanish language, and prior decisions under the Policy have acknowledged that generic terms may be legitimately used even if subject to some third-party trademark rights. Respondent indicates that it registered the disputed domain name because it is a generic term which may have value in the domain name aftermarket as a dictionary term. Respondent has no intention of operating a business that will infringe on Complainant’s rights. A business model that involves registering and reselling domain names made up of generic terms is legitimate. Respondent argues that Complainant has not carried its burden of demonstrating that Respondent knew or should have known about its trademarks when it registered the disputed domain name, particularly as the trademark is a weak one.
Respondent contends it registered and uses the disputed domain name in good faith because Complainant has provided no evidence that it operates outside of Mexico or in Respondent’s jurisdiction. Respondent argues that Complainant must demonstrate that Respondent targeted Complainant and its trademark when it registered the disputed domain name, rather than registering it because of a genuine generic or descriptive meaning. Respondent indicates that it is not sufficient merely to assert fame, evidence must be provided that the fame existed at the time of Respondent’s registration. Respondent indicates the disputed domain name was registered in November 2000, and that none of the evidence presented by Complainant relates to that period of time. Respondent indicates that Complainant presented no evidence of its volume of sales or promotional expenditures, most importantly in Respondent’s jurisdiction. Respondent indicates that Complainant has not presented any evidence that Respondent has used the disputed domain name to compete with Complainant in any way. Respondent indicates that if there was at some point a “this domain name is for sale” banner, which it does not concede, Respondent nevertheless vehemently denies knowledge of Complainant at the time of registration. Respondent argues that each case under the Policy must be addressed on its own merits, and the fact that it may have been found to have engaged in abuse in prior decisions does not mean that each of its registrations is abusive. Respondent refers to dissenting opinions favoring its position from two prior decisions under the Policy.
Respondent states that the main issue in this case is that of whether it registered and use the disputed domain name in bad faith, which it did not. Respondent indicates that it registered the disputed domain name in good faith.
Respondent requests the Panel to rule in its favor. 6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent, and Respondent filed a Response in a timely manner. The Panel is satisfied that Respondent was afforded a reasonable opportunity to respond to the Complaint in this proceeding.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(i) the disputed domain name 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief. A. Identical or Confusingly Similar
Complainant has presented a prima facie case of rights in the trademark ILUSION in Mexico, as well as in Belize, Bolivia (Plurinational State of), Canada, Colombia, Chile, China, Costa Rica, Ecuador, El Salvador, Guatemala, Haiti, Honduras, Nicaragua, Panama, Peru, the United States of America and Uruguay. Respondent has conceded that Complainant has rights in the subject trademark. The Panel determines that Complainant has established rights in the trademark ILUSION in Mexico and the additional above-referenced countries.
Complainant has contended, and Respondent has conceded, that the disputed domain name is identical to Complainant’s trademark from the standpoint of the Policy. The Panel decides that the disputed domain name is identical to Complainant’s trademark.
The Panel determines that Complainant has established that it has rights in the trademark ILUSION and that the disputed domain name is identical to that trademark. B. Rights or Legitimate Interests
Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain name are outlined above in section 5A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent argues that it registered the disputed domain name because the second level term “ilusión” is generic or commonly descriptive in the Spanish language, and that it anticipated there may be a profitable aftermarket for purchase of that domain name by a third party based on the value of the generic term. Respondent further argues that because of the generic or commonly descriptive nature of Complainant’s trademark term, a substantial burden is placed on Complainant to demonstrate Respondent’s lack of rights or legitimate interests.
The Panel accepts that the term “ilusión” has a generic or commonly descriptive meaning in the Spanish language, as the term “illusion” has a generic or commonly descriptive meaning in the English language. The Panel further notes that a party registering a generic or commonly descriptive term as a domain name may well demonstrate rights or legitimate interests in the use of that term in circumstances where it is used as a trademark by a third-party, such as by using it in a fair descriptive way. Nonetheless, the general view of panelists under the Policy is that registration of a generic or commonly descriptive term does not, as such, establish rights or legitimate interests. Rather, the registrant of such a term may establish rights or legitimate interests depending on the context of its use. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, para 2.2.6
Respondent has appropriately stressed that its principal defense is under paragraph 4(b) of the Policy regarding registration and use in bad faith.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These are “(i) circumstances indicating that [the respondent has] registered or [the respondent has] 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 [the respondent’s] documented out-of-pocket costs directly related to the domain name; or (ii) [the respondent has] 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 (iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s ] web site 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 [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.”
It is more than 14 years since the disputed domain name was registered. The parties are essentially in agreement that Respondent has not used the disputed domain name other than in the context of a parking page. Complainant alleges that Respondent has used the disputed domain name for a PPC parking page that takes advantage of Complainant’s trademark rights. But, Complainant has provided very little evidence to support that assertion. It appears that much of the historic use of the disputed domain name has been to a webpage showing a generic photo, and that to the extent there has from time to time been a parking page with links, those links have not been directed in any meaningful way to competitors of Complainant. It is difficult for the Panel to construe the webpages provided by Complainant (and Respondent) as evidence of an attempt by Respondent to take commercial advantage of the goodwill in Complainant’s trademark. Complainant has further stated that Respondent used the disputed domain name in connection with a webpage offering the domain name for sale. The Panel has not found this in the evidence provided by Complainant, and it was not specifically identified by Complainant. Nor has Respondent located it. But, if there is a parking page among those provided that includes a “this domain for sale” statement, it is not a material part of Respondent’s activity.
In light of Respondent’s essential “nonuse” of the disputed domain name, the Panel rejects Complainant’s contention that Respondent registered the disputed domain name to divert Internet users to Respondent’s PPC website by using Complainant’s trademark. Respondent has had 14 years in which to evidence bad faith intent by actively using it in connection with a website that promotes links to competitors of Complainant. The sporadic appearance of a few references to women’s clothing among the webpages associated with Respondent’s parking page are insufficient to substantiate that claim.
Respondent has conceded that it registered the disputed domain name because it might have a resale value greater than the cost of registration. Respondent has conceded that it is a “domainer”.
Registering domain names for the purpose of resale is not bad faith under the Policy. In order to prove bad faith registration and use, Complainant must demonstrate that Respondent knew or reasonably should have known of its trademark rights at the time Respondent registered the disputed domain name, and that Respondent nonetheless registered the disputed domain name to sell based on goodwill value associated with Complainant’s trademark. Respondent is within its rights to register a generic or commonly descriptive term in expectation or hope that it will prove to have a value to a third party and may eventually be sold at a profit.
Respondent points out that Complainant has provided little evidence regarding its use of the trademark ILUSION as of the date that the disputed domain name was registered. This raises the question whether Respondent knew or reasonably should have known of Complainant and its trademark rights at the time Respondent registered the disputed domain name, and thus whether Respondent might reasonably have anticipated that Complainant would wish to purchase the disputed domain name, or that Respondent could otherwise obtain a market value for the disputed domain name based on the value of Complainant’s goodwill in its trademark.
Complainant has not indicated whether it would have been possible in November 2000 (when the disputed domain name was registered) to conduct an electronic search of the IMPI registration database in Mexico. To the Panel it seems unlikely that this would have been possible more than 14 years ago. It is not apparent how Respondent might have known of Complainant’s trademark registration in Mexico at the time of registration of the disputed domain name. Complainant has not presented evidence that its trademark was otherwise known outside Mexico in the year 2000 (i.e., it has not presented evidence of actual use of the trademark as of that time), and it is not otherwise apparent how Respondent might have known of its rights in Mexico.
Respondent claims to be based in Hong Kong, China, but evidence from Complainant suggests it has an affiliated North American presence, as well as perhaps some presence in the Caribbean. Complainant registered its trademark in Canada in 1995, and in the United States of America in 1999. The disputed domain name was registered in 2000. Complainant has not provided evidence that Respondent reasonably should have known of its trademark registrations in the United States and Canada as of 1999 and 1995 respectively. Complainant has not provided any evidence of actual use of the trademark in North America in or before the year 2000, and has not indicated that information regarding such registrations was readily accessible through electronic search facilities at that time.
The Panel is of the view that Complainant has not established that as of the date of registration of the disputed domain name Respondent knew or reasonably should have known of its trademark rights. Complainant’s trademark is a generic or commonly descriptive term in the Spanish language, and in order for Respondent to have been acting to take advantage of its trademark, Respondent must have known that Complainant had established goodwill in that term. That is not demonstrated on the record here.
Complainant notes that Respondent or its affiliated entities has been the subject of a number of adverse decisions under the Policy. But, in this proceeding there is no evidence that Respondent registered the term “ilusión" in order to prevent Complainant from registering its trademark in a corresponding domain name. The fact that Respondent may have engaged in a pattern as to other trademark owners does not establish that it did so here.
The concept of passive holding may apply in circumstances in which a trademark term is registered as a domain name, and even though not actively used, nonetheless could not reasonably have been registered for a purpose other than to take advantage of a well-known trademark. This proceeding does not involve the type of circumstances which may lead to a finding of bad faith based on passive holding.
It is more than 14 years since the disputed domain name was registered, and in that time Respondent has not manifested any overt bad faith conduct in respect to Complainant or any other party associated with the trademark ILUSION. To the extent that conduct subsequent to registration of a domain name may provide evidence of the intention of the registrant at the time of registration, Respondent’s post-registration conduct does not lend itself to a finding of bad faith intent.
The Panel determines that Complainant has failed to demonstrate that Respondent registered and is using the disputed domain name in bad faith. Because Complainant has failed to establish this third element, the Panel determines that Complainant does not succeed in its Complaint. 7. Decision
For the foregoing reasons, the Complaint is denied.
Frederick M. Abbott
Sole Panelist
Date: February 28, 2015
1 In most, but not all, of the registrations the word ILUSION is spelled with an accent mark over the "S", as in "ILUŚION". Some of Complainant’s registrations are without accent, .com domain names may not include accent marks, Respondent does not contest Complainant’s rights in a trademark, nor does Respondent contest confusing similarity. For convenience and consistency the Panel uses ILUSION without accents throughout this decision.
2 Translation by the Panel.
3 Complainant has submitted copies of the relevant certificates of registration, as well as renewals.
4 Complainant has submitted a WHOIS printout confirming the date of creation in 1999.
5 Complainant has alleged that Respondent’s use included a “this domain is for sale” indicator, but the Panel has not identified such use in the evidence. It is possible that such a statement appears somewhere, but if so, it is not a significant feature.
6 WIPO Overview 2.0, para 2.2, states, inter alia:
“Panels have recognized that mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase (which may be generic with respect to certain goods or services), may not of itself confer rights or legitimate interests in the domain name. Normally, in order to find rights or legitimate interests in a domain name based on the generic or dictionary meaning of a word or phrase contained therein, the domain name would need to be genuinely used or at least demonstrably intended for such use in connection with the relied-upon meaning (and not, for example, to trade off third-party rights in such word or phrase).”
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