The Complainant is Codotrans, Inc. of Doral, Florida, United States of America (US), represented by Juancarlo Cevallos, US.
The Respondent is Grupo Remor of Antiguo Cuscatlan, La Libertad, El Salvador, represented by Maria Ofelia Amaya, El Salvador. 2. The Domain Name and Registrar
The disputed domain name is registered with Wild West Domains, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2018. On January 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 16, 2018, 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 January 22, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 11, 2018. The Response was filed with the Center on February 10, 2018. The Complainant submitted a supplemental filing to the Center on February 12, 2018. The Respondent submitted an email communication to the Center on February 15, 2018.
The Center appointed Antony Gold as the sole panelist in this matter on March 9, 2018. 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 a freight forwarding business based in Florida, US. It was incorporated in June 2001 and, since that date, it has traded under the names CODOTRANS and CODOTRANS, INC.
The Respondent is a company based in El Salvador with which the Complainant has previously had a trading relationship.
The disputed domain name was registered on February 7, 2005. WhoIs details for the year 2011 show both the Complainant and a representative of the Respondent as the registrant contact. In January 2014, the registrant information was updated to show the Respondent as the registrant. In September 2014, there was a further change of registrant details. Then, in March 2015, a further update was made so that the registrant details were protected by a privacy service. Yet further changes to the record were made in 2018, including, on February 10, 2018, the removal of the privacy service as registrant, to be replaced, once again, by the Respondent.
For many years, the website to which the disputed domain name pointed promoted the services of the Complainant. The business relationship between the Complainant and the Respondent terminated in or around August 2017. As at January 4, 2108, the disputed domain name pointed to a website which contained details of a number of companies providing services similar to those of the Complainant in different countries. The company shown as the service provider for El Salvador is a competitor of the Complainant. 5. The Complainant’s Supplemental Filing
The Rules and Supplemental Rules provide for service of a complaint and a response. There is no explicit provision for additional filings save in respect of further statements or documents which are provided in response to a request from the Panel (paragraph 12 of the Rules). Pursuant to paragraph 10 of the Rules, the Panel is enabled to “conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules” and obligated to “ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case”.
The decision whether to accept supplemental filings is at the discretion of the panel, but is exercised sparingly. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.6 and, in particular, the commentary that “[u]nsolicited supplemental filings are generally discouraged, unless specifically requested by the panel” and the comment that “panels have repeatedly affirmed that the party submitting or requesting to submit an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response (e.g., owing to some ‘exceptional’ circumstance)”.
The assertion by the Respondent that it had always owned the disputed domain name might not have been anticipated by the Complainant. Accordingly, the additional details of the various changes in the registrant details for the disputed domain name provided in the Complainant’s Supplemental Filing is of assistance to the Panel in considering that issue. Save for that, there is little in the Supplemental Filing which is genuinely responsive to issues raised by the Respondent which the Complainant might not have anticipated and the Panel has not taken into account the remainder of the filing. 6. Parties’ Contentions A. Complainant
The Complainant says that the disputed domain name is identical or confusingly similar to a trade mark in which it has rights. It says it owns a trade mark for CODOTRANS (with device) registered in Costa Rica on October 23, 2009, registration number 195233, in class 39, covering transportation and related services.
The Complainant also has unregistered trade mark rights in CODOTRANS, having used it as its trading name since its incorporation in June 2001. The website to which the disputed domain name pointed for many years consistently promoted its services as CODOTRANS. The Complainant has also promoted its CODOTRANS name on corporate stationery and staff t-shirts and used it as its trading style in its dealings with customers, prospective customers and third parties.
The Complainant says that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent’s official name is Grupo Remor, as is evident from the records of the Registry of Commerce in El Salvador. The Respondent has a trading style of GCR (GRUPO CORPORATIVO REMOR), which is unconnected with the Complainant and its brand. The Respondent’s name and offering is not related in any way to the disputed domain name. It has never been known by the disputed domain name and is not making fair use of it. Instead, it is using the disputed domain name to mislead prospects, consumers and business partners into dealing with direct competitors of the Complainant.
The Complainant says the disputed domain name was registered and is being used in bad faith. The Respondent has been the Complainant’s agent in El Salvador for approximately ten years. The Respondent also provided web-related services to the Complainant, including website design, web hosting and domain name registration. The arrangement continued until August 1, 2017, when the Respondent’s group of companies ended its business relationship with the Complainant. On August 8, 2017, the Respondent refused to transfer the disputed domain name to the Complainant. On or around August 11, 2017, the passwords to the Complainant’s email accounts connected with the disputed domain name were changed by the Respondent, blocking access to them by the Complainant’s employees.
On August 18, a subsidiary of the Respondent announced that it had been appointed as agent for a competitor of the Complainant. Emails intended for the Complainant are now being intercepted by the Respondent, including those being sent to the principal contact email address the Complainant had used for new business enquiries. This is now being used to capture potential new business which can be directed to a competitor of the Complainant, with whom the Respondent now works. The Respondent is also seeking to intentionally attract, for commercial gain, Internet users, who have visited the website to which the disputed domain name points in the mistaken belief that it will be the Complainant’s website. B. Respondent
The Respondent asserts that it is the legitimate owner of the disputed domain name and has been paying the renewal fees for it. It produces evidence that a Rafael Ernesto Moreno Colocho, a director of the Respondent, owns trade marks for CODOTRANS in El Salvador, Guatemala, Honduras and Nicaragua, each of which was registered in the period 2010-2011.
The Respondent says it has a legitimate interest in the disputed domain name by virtue Mr. Colocho’s trade mark registrations. It also produces a photograph of the interior of its office in El Salvador which shows the CODOTRANS brand name and logo on a wall of the office.
The Respondent says that the identity of the registrant of the disputed domain name has been kept private since February 2015, but says that this is in accordance with good practice and that it has not tried to conceal any information.
The Respondent says that is has not ended the business relationship with the Complainant, as alleged, and that it has not received any formal notification from the Complainant that it has ended. That is why no changes were made to the website to which the disputed domain name pointed during 2017. However, on January 5, 2018 the website was disconnected and is no longer accessible, in order that its design and content can be renovated. 7. Discussion and Findings
Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark 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. A. Identical or Confusingly Similar
Whilst the Complainant asserts that it has a registered trade mark for CODOTRANS, the holder of the Costa Rican trade mark on which it relies is a Manuel José Rodriguez Amiama. The trade mark registration details provide an address for Mr. Amiama in Florida, US, where the Complainant is also based, so he may have, or have had, some connection with it. However, the Complainant has not attempted to explain the basis of any connection and the third party company profile of the Complainant, which it has provided as an annex to the Complaint, does not show him to be an officer of the Complainant. In the absence of any evidence which establishes a connection between Mr. Amiama and the Complainant, the Panel does not accept the Costa Rican trade mark as establishing its trade mark rights in CODOTRANS.
So far as the Complainant’s claim to unregistered or common law rights is concerned, the relevant standard is outlined at section 1.3 of the WIPO Overview 3.0; “…the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services”. Moreover; “Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case would not normally suffice to show secondary meaning”.
The Complainant has been established for almost 17 years. Throughout that time it has traded through the name CODOTRANS or CODOTRANS, INC. (the Panel does not regard this slight difference as material). It has provided proof of use and promotion of the CODOTRANS brand on both its website and on corporate stationary and in dealings with third parties and in business proposals as well as in online business directories. It has also produced two testimonials from third party companies, each of which says that it has dealt with the Complainant for over ten years and recognises it as “a high value brand with a lot of respect in the logistics group, in which they have been consolidating their reputation with strength through all these years”. The Complainant has also produced an extract from a credit reference report (unhelpfully undated) showing an annual turnover of approximately USD 7.6 million, which points to a business of reasonable scale and a relatively widespread use of its trading style.
Moreover, the Respondent’s evidence does not directly challenge the Complainant’s assertion that it has unregistered or common law rights in the CODOTRANS trade mark; it simply says that Mr. Colocho has also registered trade marks for CODOTRANS in other jurisdictions.
Having regard to all of the above, the Panel finds that the Complainant has rights in CODOTRANS for the purpose of paragraph 4(a)(i) of the Policy.
Turning now to the question of identicality or similarity, when comparing the disputed domain name to the Complainant’s trade mark, it is established that the generic Top-Level Domain (that is “.com” in the case of the disputed domain name) is disregarded, as it is a technical requirement of registration. The Domain Name System is not case sensitive. The Panel accordingly finds that the remaining component of the disputed domain name, “codotrans”, is identical to the unregistered trade mark, CODOTRANS, in which the Complainant has rights. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out, without limitation, four circumstances by which a respondent might show that it has rights or legitimate interests in a domain name, namely (in summary);
(i) before any notice to it of the dispute, it had used or made demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services; or
(ii) it had been commonly known by the domain name; or
(iii) it was 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.
Dealing first with the issue of bona fide use, the Respondent asserted in its Response, dated February 10, 2018, that the website to which the disputed domain name pointed “is down, in order to be renovated the design and content”.
As explained at section 2.11 of the WIPO Overview 3.0, “the assessment of the legitimate interests claimed by the Respondent is usually undertaken at the time a complaint is considered”. With that in mind, the Panel considered it material to establish the nature of any website to which the disputed domain name presently points. The circumstances in which a panel might typically take this course are outlined at section 4.8 of the WIPO Overview 3.0; “Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent or its use of the domain name”.
The Panel has accordingly visited the website to which the disputed domain name points. It contains a notice saying “Welcome to ”, a number of links (in Spanish) to third party websites, the descriptors including terms such as Elbow, Knee and Shoulder Trauma. There is also a box containing the offer “Would you like to buy this domain?”. There is simply nothing to suggest that the Respondent has any intention of using the disputed domain name in connection with a bona fide offer of goods and services. Furthermore, apart from a solitary photograph of the interior of an office which has the Complainant’s trade mark and logo on a wall and which is presumably a residue from when the parties were working together, there is no evidence that the Respondent is either making any ongoing use of CODOTRANS or has any bona fide intent to do so in the future.
So far as paragraph 4(c)(ii) of the Policy is concerned, it is necessary to evaluate the significance of the trade marks registered by the Respondent’s representative, Mr. Colocho, in four countries in Latin America. These were registered after the Complainant had been established for almost ten years, and in the context of what was, at that time, an ongoing business relationship.
As explained at section 2.12.2 of the WIPO Overview 3.0: “The existence of a respondent trademark does not however automatically confer rights or legitimate interests on the respondent. For example, panels have generally declined to find respondent rights or legitimate interests in a domain name on the basis of a corresponding trademark registration where the overall circumstances demonstrate that such trademark was obtained primarily to circumvent the application of the UDRP or otherwise prevent the complainant’s exercise of its rights (even if only in a particular jurisdiction)”.
See also BECA Inc. v. CanAm Health Source, Inc.,WIPO Case No. D2004-0298, and the panel’s finding that “a conclusion that a trademark wherever and however obtained grants sufficient rights under paragraph 4(a)(ii) is unattractive. It suggests that a cybersquatter can avoid the Policy by the mere device of obtaining a trademark registration anywhere in the world. Given that in some jurisdictions a trademark can be obtained without any real process of examination this would open up a significant lacuna in the Policy”. Similarly, see the finding of the panel in Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "M",WIPO Case No. D2000-0847; “…. it would be a mistake to conclude that mere registration of a trademark creates a legitimate interest under the Policy. If an American-based Respondent could establish "rights" vis a vis an American Complainant through the expedient of securing a trademark registration in Tunisia, then the ICANN procedure would be rendered virtually useless. To establish cognizable rights, the overall circumstances should demonstrate that the registration was obtained in good faith for the purpose of making bona fide use of the mark in the jurisdiction where the mark is registered, and not obtained merely to circumvent the application of the Policy”.
Save for the reference by the Respondent to Mr Colocho’s trade marks, there is no evidence submitted by it to suggest that the Respondent has ever traded on its own account as CODOTRANS or will do so in the future. In the circumstances, the Panel does not accept that the existence of Mr. Colocho’s trade mark registrations is sufficient to found a right or legitimate interest on the part of the Respondent.
Lastly, the Respondent asserts that its ownership of the disputed domain name is evident from the fact that it has been paying the renewal fees for it. Neither the Complainant nor the Respondent has explained in any detail the precise nature of the parties’ trading relationship, but there is nothing to suggest that this contention should be given any weight, not least when the Respondent has not stated whether or not the cost of the renewal fees was ever recouped, directly or indirectly, from the Complainant.
In the light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
As explained above, the disputed domain name was initially registered in the name of the Complainant but, in January 2014, the Respondent changed the registrant details in order to substitute itself as registrant name and company. The registrant details have changed, at the instigation of the Respondent, many times since.
The WIPO Overview 3.0 explains at section 3.9 that “whilst formal changes of registrant contact information would not be treated as a new registration, the transfer of a domain name registration from a third party to the respondent is not a renewal and the date on which the current registrant acquired the domain name is the date a panel will consider in assessing bad faith”.
The most problematic change to the registrant details is that which occurred in January 2014. However, the numerous and unexplained changes to the registrant details over a four year period gives rise to considerable suspicion as to the Respondent’s motives. In this respect, the Respondent has not disputed any of the Complainant’s assertions that its control and use of the disputed domain name has resulted in a position in which the disputed domain name is no longer being used to promote the Complainant, the Complainant no longer has access to its employees’ email addresses and that new business enquiries can now be intercepted by the Respondent and forwarded to a competitor of the Complainant with whom it now works.
Moreover, the Respondent has not provided any explanation as to why it transferred the disputed domain name from the Complainant to itself in 2014, nor why the disputed domain name presently points to a parking page which, in addition to containing links unconnected with the business of either of the parties, also offers it for sale. Against this background, the Respondent’s assertion that it ceased to point the disputed domain name to the Complainant’s website in January 2018 “in order that its design and content can be renovated” is implausible and not accepted by the Panel.
The facts, are close to the example of bad faith registration and use described at 4(b)(iii) of the Policy, that is where a respondent registered a domain name primarily for the purpose of disrupting the business of a competitor. For the purpose of the Policy, a relatively wide interpretation has been placed on the word “competitor”; see, for example, Mission KwaSizabantu v. Benjamin Rost,WIPO Case No. D2000-0279 in which the panel explained that “The natural meaning of the word ‘competitor’ is one who acts in opposition to another and the context does not imply or demand any restricted meaning such as a commercial or business competitorˮ.
Moreover, section 1 of the WIPO Overview 3.0 explains that “Given that the scenarios described in UDRP paragraph 4(b) are non-exclusive and merely illustrative, even where a complainant may not be able to demonstrate the literal or verbatim application of one of the above scenarios, evidence demonstrating that a respondent seeks to take unfair advantage of, abuse, or otherwise engage in behavior detrimental to the complainant’s trademark would also satisfy the complainant’s burden”.
The Respondent’s behaviour clearly fits within this broader characterisation of the type of conduct envisaged by paragraph 4(b) of the Policy. Its conduct, as described above, has taken advantage of, and been detrimental to, the Complainant’s trade mark rights.
The Panel accordingly finds that the disputed domain name was registered and used in bad faith. 8. 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.
Antony Gold
Sole Panelist
Date: March 22, 2018
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