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 / Edar Martin Monsisvais Ramirez 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 24, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 13, 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 December 20, 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 the LINIO trademark 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 “en” (which is the equivalent in the Spanish language to the preposition “in”), adds to the confusing similarity of the disputed domain name with regards to the Complainant’s licensed trademark.
That 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 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 access the deal offered.
That the Complainant has been notified with reports from individuals who have received the Respondent’s email communications, and did not receive 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 Expert 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 has proven to be the licensee of several trademark registrations for LINIO in Mexico. This 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 comprises said trademark in its entirety.
The addition of the term “en” (which is the equivalent in Spanish language to the preposition “in”) does not overcome the confusing similarity between the disputed domain name and the Complainant’s licensed trademark LINIO. Previous UDRP panels have considered that such minor differences do not diminish the confusion that results from the remaining similarities (see Lammot Copeland, Jr. v. Computer Product Introductions,WIPO Case No. D2003-0823; and Inter-IKEA Systems B.V v. Technology Education Center,WIPO Case No. D2000-0522). In this case, the presence of the term “en” in the disputed domain name does not alleviate the confusing similarity created by the inclusion of the trademark LINIO in the disputed domain name.
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 found in the case file, the disputed domain name is currently inactive.
Previous UDRP Panels have concluded that, when the 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 to 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 a prima facie case. The Respondent has not submitted any evidence or arguments which could demonstrate its rights or legitimate interests in the disputed domain name or, at least, rebut the Complainant’s prima facie case.
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 has proven to be the licensee of several trademark registrations for LINIO in Mexico, where the Respondent appears to be domiciled. These trademark registrations largely predate the registration of the disputed domain name.
For the preceding reasons, this Expert is inclined to conclude that the Respondent was fully aware of the existence of the trademarks LINIO at the moment of registering the disputed domain name. A finding of bad faith may be made where the Respondent knew of the registration and use of the trademark prior to registering the disputed domain name (see Façonnable SAS v. Names4sale,WIPO Case No. D2001-1365; and Research In Motion Limited v. Privacy Locked LLC/Nat Collicot,WIPO Case No. D2009-0320).
In this case, the current inactive use of the disputed domain name by the Respondent − in connection to the Respondent’s knowing registration of a domain name containing a third party’s trademark − may satisfy the hypothesis set forth by the Policy regarding bad faith use and registration.
This Panel finds that the circumstances of this case match some of the factors set forth in the Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, as detailed below:
- As stated above, the Respondent’s actions prove that he was aware of the existence of the Complainant and its licensed trademarks LINIO, at the time of registering the disputed domain name.
- The Complainant has proven to be the licensee of several trademark registrations for LINIO in Mexico, where the Respondent claims to be domiciled.
- The Respondent has provided no evidence whatsoever of any actual or contemplated bona fide use of the disputed domain name.
- The Respondent has provided inaccurate contact details to the Registrar. This is evidenced by the failure of the courier service hired by the Center to deliver the Complaint to the Respondent’s physical address on three occasions due to the address being incomplete or wrong. Providing inaccurate contact details is a clear breach of the Registrar’s registration agreement.
- The trademark LINIO has been extensively used and publicized on the Internet, particularly in relation to Latin American users. At the time of registration of the disputed domain name, the trademark LINIO enjoyed a considerable reputation and recordation in Mexico, where the Respondent claims to be domiciled.
- Under these circumstances, it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate.
The concept of the disputed domain name being used in bad faith is not limited to a positive action, as inaction may, under certain circumstances, amount to the domain name being used in bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows, supra).
Furthermore, this Expert concludes that the Respondent knowingly registered a domain name which entirely incorporates the Complainant’s licensed trademark LINIO. Under the facts brought up by the Complainant, the disputed domain name is similar to the Complainant’s licensed trademark. The Respondent’s selection of the disputed domain name does not seem to have been coincidental, but targeted at the trademark LINIO. This is why it is difficult to conceive of any use of the disputed domain name which would not illegitimately generate confusion (see Sony Kabushiki Kaisha v. ,WIPO Case No. D2000-1074).
The Panel notes the Complainant’s assertion that the disputed domain name has been used in connection with fraudulent emails but as these assertions have not been evidenced the Panel does not consider them for purposes of its assessment. In any event, in light of the Panel’s findings above, the Panel finds that this does not have an effect on the outcome of these proceedings.
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 16, 2017
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