The Complainant is Bazaya Mexico S. de R.L. de C.V. of Mexico City, Mexico Distrito Federal, Mexico, represented by Orrick, Herrington & Sutcliffe, LLP, United States of America (“United States”).
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States / alfonso uribe of Guadalajara, Jalisco, Mexico. 2. The Domain Name and Registrar
The disputed domain name is 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 March 14, 2017, 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 the Complainant on March 15, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 21, 2017.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 22, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 11, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 23, 2017.
The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on May 1, 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 October 24, 2016. The disputed domain name does not resolve to an active website. 5. Parties’ Contentions A. Complainant
The Complainant argues the following:
I) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
That the Complainant has made great efforts to promote trademark LINIO and the services for which it is intended.
That the disputed domain name is confusingly similar to the Complainant’s licensed trademark LINIO.
That the addition of the term “marketing” increases the confusing similarity of the disputed domain name with regards to the Complainant’s licensed trademarks LINIO, as the term “marketing” describes the Complainant’s business.
That the trademark LINIO is the distinguishing feature of the disputed domain name.
II) The Respondent has no rights or legitimate interests in respect of the disputed domain name.
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 the disputed domain name.
That the Respondent is not using the disputed domain name 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 to third parties in an attempt to trick recipients into visiting the Respondent’s website.
III) The disputed domain name has been registered and is being used in bad faith.
That the Respondent is using the Complainant’s licensed trademark LINIO as part of the disputed domain name, 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 on the Complainant’s 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. 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 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.
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 constitute a violation of the Policy that is sufficient to order the transfer of the disputed domain name (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 several 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. Inc. v. J. Alexis Productions,WIPO Case No. D2003-0624).
The disputed domain name is confusingly similar to the Complainant’s licensed trademark LINIO, as it is comprised in its entirety in such domain name.
The addition of the dictionary term “marketing” is insufficient to avoid the confusing similarity of the disputed domain name to the Complainant’s LINIO licensed trademark. On the contrary, the addition of the term “marketing” to the disputed domain name increases the confusing similarity, as the Complainant's trademark is used in connection to advertising and sales endeavors related to 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).
Furthermore, the addition of the generic Top-Level Domain (“gTLD”) “.com” is irrelevant for the purposes of assessing confusing similarity with the Complainant’s trademarks (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 LINIO trademarks. 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 the disputed domain name.
The Complainant claims that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, or making a legitimate noncommercial or fair use of the disputed domain name. According to the evidence in the case file, the disputed domain name is currently inactive. In the absence of evidence to the contrary, this Panel concludes that the disputed domain name has 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 an email address hosted by the disputed domain name, intending to impersonate the Complainant. This cannot be considered as having made a bona fide offering of goods or services, or making a legitimate, noncommercial or fair use of the disputed domain name. From this Panel’s perspective, this constitutes convincing evidence showing the Respondent’s lack of rights or legitimate interests over the disputed domain name.
Previous Panels have concluded that, when a Complainant establishes a prima facie case that the Respondent has no rights to, or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name (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 prima facie case. The Respondent has not submitted any evidence or arguments which could demonstrate his rights or legitimate interests in the disputed domain name. Moreover, as seen above, the evidence found in the case file shows that the disputed domain name was 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 an email address hosted by the disputed domain name. According to the Complainant, in said email communications, the Respondent has created the impression of being part of the Complainant’s sales department.
The evidence submitted by the Complainant as Annex F shows email communications sent from the email address […]@, through which an Internet user is offered portable computers for sale. The sender, presenting himself as a sales manager for LINIO, states that the offer featured is not open to the public and provides a bank account for the Internet user to transfer or deposit the price related to the products supposedly being sold. The Respondent did not provide arguments or proof to rebut this evidence.
The evidence filed by the Complainant shows that the disputed domain name has been used to perpetrate fraudulent activities against Internet users by wrongfully impersonating the Complainant’s sales department. These actions are proof of the bad faith use of the disputed domain name 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 name with the purpose of obtaining a commercial benefit by confusing consumers as to the source of the communications sent by email address […]@. This shows bad faith registration and use of the disputed domain name.
Additionally, the Complainant has proven to be the licensee of trademark registrations for LINIO in Mexico, where the Respondent has declared to have his domicile. These trademark registrations predate the registration for the disputed domain name. This fact, alongside the Respondent’s fraudulent use of the disputed domain name − representing himself as a sales manager for the Complainant − evidence that the Respondent targeted the Complainant’s licensed trademarks at the time of registration with the intention of perpetrating illegal activities, which translates into bad faith registration of the disputed domain name (see Schaerer AG AG v. matts, marks, supra.). In light of the above, the current inactivity of the disputed domain name does not prevent a finding of bad faith registration and use of the disputed domain name.
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 name, be transferred to the Complainant.
Kiyoshi Tsuru
Sole Panelist
Date: May 15, 2017
Full & Egal Universal Law Academy