The Complainant is Bazaya Mexico S. de R.L. de C.V. of Ciudad de Mexico, Mexico, represented by Orrick, Herrington & Sutcliffe, LLP, United States of America.
The Respondent is Alfonso Uribe of Guadalajara, Mexico. 2. The Domain Names and Registrar
The disputed domain names , , are registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 10, 2017. On March 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March14, 2017, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 21, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 10, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 20, 2017.
The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on May 5, 2017. 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 Bazaya Mexico S. de R.L. de C.V., a Mexican company engaged in operating an e‑commerce platform in Latin America.
The Complainant is the licensee of the following trademark registrations, among others:
Trademark
Registration Number
Registration Date
Class
Jurisdiction
LINIO
1334217
November 29, 2012
6
Mexico
LINIO
1339007
December 14, 2012
36
Mexico
LINIO
1336480
December 4, 2012
18
Mexico
LINIO
1336727
December 5, 2012
37
Mexico
LINIO
1336728
December 5, 2012
39
Mexico
The Complainant also owns the following domain names:
Domain Name
Registration Date
May 22, 2012
October 25, 2012
The Respondent registered the disputed domain name on July 12, 2016.
The Respondent registered the disputed domain name on September 29, 2016.
The Respondent registered the disputed domain name on August 10, 2016.
The disputed domain names do not resolve to any active websites. 5. Parties' Contentions A. Complainant
The Complainant argues the following:
I) The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights
That the Complainant has undergone great efforts to promote the trademark LINIO and the services for which it is intended.
That the disputed domain names are confusingly similar to the Complainant's licensed trademark LINIO.
That the disputed domain name is confusingly similar to the Complainant's LINIO trademark. That the addition of the geographical term "Mexico" does not reduce the confusing similarity between the trademark LINIO trademark and the disputed domain name.
That the disputed domain names and are confusingly similar to the Complainant's licensed trademark LINIO. That the addition of the dictionary term "almacen" (the Spanish word for "warehouse") increases the confusing similarity of the LINIO trademark with the disputed domain names.
That the trademark LINIO is the distinguishing feature of the disputed domain names. That the inclusion of the geographic term "Mexico" and the dictionary term "almacen", respectively, increase the likelihood of confusion of the LINIO trademark with the disputed domain names.
II) The Respondent has no rights or legitimate interest in respect of the disputed domain names
That the Respondent is neither authorized nor licensed to use the LINIO trademark.
That to the Complainant's knowledge, there is no evidence of the Respondent having been commonly known by any of the disputed domain names.
That the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services, or making a legitimate noncommercial or fair use of the disputed domain name.
That the Respondent has sent out deceptive, misleading and unauthorized emails, in an attempt to trick recipients into visiting the Respondent's website.
III) The disputed domain names have been registered and are being used in bad faith
That the Respondent is using the Complainant's licensed trademark LINIO as part of the disputed domain names, to acquire commercial gain, by creating confusion as to the source, affiliation or sponsorship of the Respondent's website.
That the Respondent has sent email communications to Internet users. That in said email communications, the Respondent has misleadingly created the impression of being the owner of the trademark LINIO.
That the emails sent by the Respondent appear to offer products commonly found in the official LINIO website at a lower price. That the email communications sent by the Respondent require Internet users to transfer a certain amount of money, in order to gain access to the deal offered therein.
That the Complainant has received reports from individuals who have received the Respondent's email communications, and who have not received the products they ordered despite having transferred the specified funds.
That the Respondent has registered and used other domain names containing the LINIO trademark. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
According to the Policy, to qualify for a cancellation or transfer, a complainant must prove each of the elements listed below:
(i) the disputed domain names are 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 names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
Since the Respondent has failed to reply to the Complainant's assertions, the Panel may choose to accept the reasonable contentions of the Complainant as true. This Panel will determine whether those facts are sufficient to establish the Policy elements to order transfer of the disputed domain names (see Joseph Phelps Vineyards LLC v. NOLDC, Inc., Alternative Identity, Inc., and Kentech,WIPO Case No. D2006-0292). A. Identical or Confusingly Similar
The Complainant is the licensee of trademark registrations for LINIO in Mexico, a fact which suffices to assert rights over said trademark (see Lycos Europe N.V. v. RegionCo,WIPO Case No. D2000-1102; and Toyota Motors Sales U.S.A. v. J. Alexis Productions,WIPO Case No. D2003-0624).
The disputed domain names are confusingly similar to the Complainant's licensed trademark LINIO, as this trademark is comprised in its entirety in said domain names.
The addition of the dictionary term "almacen" (meaning "warehouse" in Spanish) in the disputed domain names and is insufficient to avoid the confusing similarity of these disputed domain names in relation to the Complainant's trademark LINIO. On the contrary, the incorporation of the word "almacen" (meaning "warehouses" in Spanish) to the disputed domain names increases the confusing similarity with the trademark LINIO, as the term included by the Respondent is used in the Spanish language in connection to the storage and sale of a variety of products (see TPI Holdings, Inc. v. Carmen Armengol,WIPO Case No. D2009-0361; and Hoffmann-La Roche Inc. v. Wei-Chun Hsia,WIPO Case No. D2008-0923).
In the case of the disputed domain name , the addition of the geographical term "Mexico" is insufficient to avoid the confusing similarity of this disputed domain name with the Complainant's trademark LINIO. Conversely, the addition of the geographical term "Mexico" to the Complainant's trademark LINIO, may increase the confusing similarity of the disputed domain name to the trademark LINIO, as Internet users looking for the Complainant could be misled as to the origin of the disputed domain names and their content, as well as their possible association to the Complainant's office in Mexico (see mutatis mutandi, Six Continents Hotels, Inc. v. CredoNIC.com / Domain For Sale,WIPO Case No. D2005-0755).
Regarding the addition of the generic Top-Level Domain ("gTLD") ".com" to the disputed domain names, it is irrelevant and immaterial for purposes of assessing confusing similarity with the Complainant's trademark LINIO (see Diageo p.l.c. v. John Zuccarini,WIPO Case No. D2000-0541).
The first element of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights to or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, the use by the respondent 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
According to the Complainant, it has not authorized nor licensed the Respondent to use the trademarks LINIO. The Respondent did not submit any argument or evidence to indicate the contrary.
There is no evidence in the case file which could indicate that the Respondent has been commonly known by any of the disputed domain names.
The Complainant claims that the Respondent is neither using the disputed domain names in connection with a bona fide offering of goods or services, nor making a legitimate noncommercial or fair use of the disputed domain names. According to the evidence found in the case file, the disputed domain names are currently inactive. In the absence of evidence to the contrary, this Panel concludes that the disputed domain names have not been used in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use.
As is further detailed below, the Respondent has sent communications from email addresses hosted by the disputed domain names, intending to impersonate the Complainant. This cannot be considered as a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain names. From this Panel's perspective, this constitutes convincing evidence showing the Respondent's lack of rights or legitimate interests over the disputed domain names.
Previous UDRP panels have concluded that, when a Complainant establishes a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, the burden shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating its rights to or legitimate interests in the disputed domain names (see Intocast AG v. Lee Daeyoon,WIPO Case No. D2000-1467; Cellular One Group v. COI Cellular One, Inc.,WIPO Case No. D2000-1521; and Skipton Building Society v. , Private Registration,WIPO Case No. D2011-0222).
This Panel considers that the Complainant established such a prima facie case. The Respondent has not submitted any evidence or arguments which could demonstrate his rights or legitimate interests in any of the disputed domain names. Moreover, as seen above, the evidence found in the case file shows that the disputed domain names were used to obtain an illegitimate profit deriving from misleadingly diverting consumers.
The second element of the Policy has been fulfilled. C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:
(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
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted 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 Complainant claims that the Respondent has sent email communications to Internet users, using email addresses hosted at the disputed domain names. According to the Complainant, in said email communications, the Respondent has created the impression of being the owner of the LINIO trademark.
The evidence submitted by the Complainant as Annex F shows the following:
- Email communications sent from the email address "[…]@", through which an Internet user is offered monitors for sale. The sender, presenting himself as a sales manager of LINIO, provides a bank account for the Internet user to transfer or deposit the cost of the products supposedly being sold. While the Internet user is apparently informed by one of the Complainant's employees that the offer is a fraud, it is not before the Internet user has seemingly transferred an advance payment.
- Email communications sent from the email address "[…]@" which display trademark LINIO. The subject of the email contains words commonly used for advertising discounts and rebates for products sold in connection to the Complainant's trademark LINIO.
- Email communications, through which an Internet user shows interest in buying portable computers. The recipient uses the email address "[…]@", who, presenting himself as a sales manager for LINIO, provides the Internet user with bank account details for the transfer or deposit of the cost related to the products supposedly being sold.
The Respondent did not provide arguments or evidence to rebut the allegations and evidence submitted by the Complainant.
Recipients of the message referred to in the preceding paragraph, may be wrongfully lead to believe that the email addresses and the disputed domain names related to it belong to the Complainant, disclosing personal data, bank information, and providing money transactions.
The evidence filed by the Complainant shows that the disputed domain names have been used to perpetrate fraudulent activities against Internet users by wrongfully impersonating the Complainant's sales department. These actions constitute evidence of the bad faith use of the disputed domain names by the Respondent (see Graybar Services Inc. v. Graybar Elec, Grayberinc Lawrenge,WIPO Case No. D2009-1017; AutoHansa AB v. Whoisguard Protected / Ciprian Tonoiu,WIPO Case No. D2015-1913; and Schaerer AG v. matts, marks,WIPO Case No. D2016-1909).
From this Panel's perspective, the above also evinces that the Respondent registered the disputed domain names with the purpose of obtaining a commercial benefit by confusing consumers as to the source of the communications sent from the email addresses associated with the disputed domain names. This shows bad faith registration of the disputed domain names.
These facts, alongside the Respondent's fraudulent use of the disputed domain names - presenting himself as a sales manager of the Complainant -, evidence that the Respondent targeted the Complainant's licensed trademarks at the time of registration with the intent of perpetrating illegal activities, a fact that translates into bad faith registration and use of the disputed domain names and (see Schaerer AG v. matts, marks, supra.).
The third element of the Policy has been fulfilled. 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.
Kiyoshi Tsuru
Sole Panelist
Date: May 19, 2017
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