The Complainant is Bolsa Mexicana de Valores, S.A.B. de C.V. of Mexico City, Mexico, represented by Cuesta Llaca Esquivel Abogados, Mexico.
The Respondent is Domain Protection Services, Inc. of Colorado, United States of America (the “United States”) / Luis Antonio Ledezma Yunis of Salamanca, Spain. 2. The Domain Name and Registrar
The disputed domain name is registered with N, Inc. (N LLC) (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 20, 2019. On February 20, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 25, 2019, 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 February 26, 2019 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 2, 2019.
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 5, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 25, 2019. The Respondent sent an email communication to the Center on March 5, 2019. The Center notified the Commencement of Panel Appointment Process on March 26, 2019.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on April 1, 2019. 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 the Mexican Stock Exchange. It is the owner, amongst others, of the following trademark registrations:
- Mexican trademark registration No. 486170 for BOLSA MEXICANA DE VALORES, in class 36, registered on March 27, 1995;
- Mexican trademark registration No. 486798 for BOLSA MEXICANA DE VALORES, in class 16, registered on April 6, 1995;
- Mexican trademark registration No. 486171 for BOLSA MEXICANA DE VALORES, in class 41, registered on March 27, 1995; and
- Mexica n trademark registration No. 486797 for BOLSA MEXICANA DE VALORES, in class 35, registered on April 6, 1995.
The disputed domain name was registered on July 18, 2015 and currently resolves to an active webpage displaying information, pictures and contact details of the Complainant, as well as pay-per-click advertisements. 5. Parties’ Contentions A. Complainant
The Complainant asserts to be the Mexican Stock Exchange and owns several trademark registrations and domain names, which include the trademark BOLSA MEXICANA DE VALORES.
The Complainant contends that the disputed domain name is identical to its well-known trademark in Mexico.
According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name given that: (i) the Respondent is not a licensee or authorized to use the Complainant’s trademark; (ii) the Respondent is not using the disputed domain name in connection with a bona fide or legitimate interest given that the webpage that resolves from the disputed domain name seeks to impersonate the Complainant and might mislead Internet users, reproducing pictures of the stock center where the Complainant carries its activities as well as information related to the Complainant; (iii) given the renown of the Complainant, and Respondent’s evident knowledge of the Complainant, it is not conceivable that the Respondent could possibly establish any rights or legitimate interests in the disputed domain name.
The Complainant contends, as to the bad faith in the registration and use of the disputed domain name that bad faith arises from the fact that the disputed domain name has been used by the Respondent to attract traffic to his website by creating a likelihood of confusion with the Complainant’s trademark as to the source of a service, being the Respondent’s knowledge of the Complainant’s trademark undoubtful in view of the reproduction of the Complainant’s trademark, information and contact details on the website associated with the disputed domain name. B. Respondent
The Respondent did not submit a formal Response to the Complaint. In his email communication to the Center on March 5, 2019, the Respondent merely stated that:
“If you want my domain so much, then pay for it! I have invested a lot of time and money in that website. I will not leave it even if you sue me for 1 million euros.
If you are willing to make an offer for him (sic), we can reach an acuerdo, otherwise, you can continue with the demand you want. A greeting.” 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(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.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(a) of the Policy. In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. A. Identical or Confusingly Similar
The Complainant has established its rights in the BOLSA MEXICANA DE VALORES trademark duly registered.
The disputed domain name, not considering the extension, is solely composed of the Complainant’s trademark.
For the reasons above, the Panel finds that the disputed domain name is identical to the Complainant’s trademarks. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate the respondent’s rights or legitimate interests in the disputed domain name. These circumstances are:
(i) before any notice of the dispute, the respondent’s use 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, in spite of not having acquired trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial 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.
The Respondent, in his brief submission, merely states that he has invested “a lot of time and money in that website” which, as a matter of fact, basically contains information, data and images all relating to the Complainant, as well as pay-per-click advertisements.
Under this Panel’s view, such use cannot characterize a bona fide offering of goods or services, given that the Respondent is solely relying on the Complainant’s notoriety to profit from diverting Internet users seeking to locate the Complainant or information related to the Complainant to the Respondent’s website, where Internet users will be faced with PPC advertisements.
In addition to that, given that the contact details disclosed on the webpage relating to the disputed domain name are the Complainant’s ones, the Respondent’s conduct further indicate an attempt to unduly impersonate the Complainant. Moreover, the disputed domain name carries a high risk of implied affiliation. See section 2.5.1of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“”WIPO Overview 3.0”).
Furthermore, the Complainant states that the Respondent has not been licensed or authorized to use the Complainant’s trademarks. Also, the absence of any indication that the Respondent owns registered trademarks or trade names corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name, corroborate with the Panel’s finding of the absence of rights or legitimate interests.
Under these circumstances and absent evidence to the contrary, the Panel finds that such use does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name and that therefore the Respondent does not have rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in the use of the disputed domain name, with an intentional attempt to attract, for commercial gain, Internet users to the 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 website or location or of a product or service on the website or location.
The Respondent’s knowledge of the Complainant appears to be evident both from the choice of the disputed domain which is identical to the Complainant’s trademark as well as the contents of the webpage relating to the disputed domain name which basically contains information, data and images all relating to the Complainant, as well as pay-per-click advertisements.
Such use is indicative of bad faith, also corroborated with the Respondent’s submission in which he indicates that the would be willing to negotiate the disputed domain name, accepting an offer for it but that he would not “leave it” even if he was sued “1 million euros”.
For the reasons stated above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use pursuant to paragraph 4(b)(i) and (iv) of the Policy. 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.
Wilson Pinheiro Jabur
Sole Panelist
Date: April 13, 2019
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