The Complainant is Fundacion Inexmoda, Colombia, represented by My Brand Legal, Colombia.
The Respondent is Contact Privacy Inc. Customer 0149775579, Canada / Balticsea LLC, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 24, 2019. On October 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 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 October 29, 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 amendment to the Complaint on November 1, 2019. The Center verified that the Complaint together with the amendment to 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 November 5, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 25, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 27, 2019. The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on December 3, 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 FUNDACION INEXMODA, a Colombian private non-profit organization devoted to promoting the growth, strengthening, and development of the Colombian fashion and design industry. The Complainant owns the following trademark registrations in Colombia: Trademark Registration Number Registration Date Classes 150841 December 13, 1993 42 540772 November 30, 2016 35, 41 351542 April 18, 2018 35 WWW.INEXMODA.COM 238706 July 4, 2001 9 WWW.INEXMODA.COM 238666 July 4, 2001 35 WWW.INEXMODA.COM 238665 July 4, 2001 38 The Complainant owns the domain name The disputed domain name was registered on December 14, 1999. The website to which the disputed domain name resolves comprises pay-per-click sponsored links. 5. Parties’ Contentions A. Complainant The Complainant argued the following: That the Complainant is a private non-profit organization established in 1988, devoted to promoting the growth, strengthening and development of the Colombian fashion and design industry. That the Complainant works directly with different actors of the Colombian fashion and design industry (e.g. manufacturers, designers, media, government, etc.), connecting them together and channeling their efforts towards higher levels of competitiveness within the Colombian and global fashion markets. That, among other events, the Complainant has run the “Colombiamoda” trade show (which, according to the Complainant, is one of the most relevant and recognized events of the Colombian and Latin American fashion and design industries), every year, for the last 30 years. That the Complainant owns various trademark registrations that protect the term INEXMODA, alone and with additional terms, in Colombia, Ecuador, Mexico, Panama, Peru, and Venezuela, in various classes. That the Complainant has recently requested to the Colombian Trademark Office the recognition of the well-known character of the trademark INEXMODA. That the Complainant is the owner and bona fide senior user of the INEXMODA trade name since 1988, and that it has operated under this trade name in Colombia since said year. That the Complainant’s substantial advertising and promotion of its trademarks, trade name, and domain name, have created significant consumer recognition of the brand INEXMODA in Colombia and Latin American countries as a major actor in the fashion market. (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 is the lawful owner of a trademark registration for INEXMODA in Colombia since 1993, which is six years prior to the registration of the disputed domain name by the Respondent. That the disputed domain name is identical to the Complainant’s trademark INEXMODA, since it fully comprises such trademark. That the generic top-level domain (“gTLD”) “.com” is irrelevant in determining whether the disputed domain name is identical to the Complainant’s trademark INEXMODA. That, given the identity between the trademark INEXMODA and the disputed domain name, it is likely that an Internet user would mistakenly look for information about the Complainant, its services and events in the web site to which the disputed domain name resolves. That the Respondent deliberately chose the combination of the trademark INEXMODA and the gTLD “.com” to improperly capitalize on the Complainant’s recognition and goodwill. (ii) The Respondent has no rights to, or legitimate interests in the disputed domain name. That the Respondent does not have rights to, or legitimate interests in the disputed domain name. That the Respondent is not commonly known by, nor has association with the disputed domain name. That the Respondent is not a licensee of the Complainant, and is not authorized to register or use the Complainant’s trademark INEXMODA. That the Respondent has registered and has used the disputed domain name in an intentional attempt to attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with the Complainant’s trademark INEXMODA, as to the source of said website. That the disputed domain name resolves to a website that displays several links that in turn, redirect Internet users to online retail stores and/or to “www.shopify.es”, a commercial platform that allows users to start, grow and manage their businesses. That the website to which the disputed domain name resolves, redirects Internet users looking for the Complainant to websites that are unrelated to the Complainant. That, since most of these websites have a commercial nature, this use of the disputed domain name is most likely providing the Respondent with click-through income arising from the confusion of users. That the disputed domain name has been put up for sale by the Respondent for a minimum bid of USD 500 at the auction platform sedo.com, and that this fact evidences that the Respondent has registered the disputed domain name for the purpose of selling it, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name. (iii) Registration and use in bad faith. That the Respondent registered and has used the disputed domain name in bad faith. That the Respondent intentionally registered and is using the disputed domain name to attract Internet users to the Respondent’s website for commercial gain, while creating a likelihood of confusion with the Complainant and its trademark INEXMODA. That the structure of the disputed domain name constitutes evidence in itself that the Respondent was aware of the Complainant’s existence, trademarks and reputation, at the time of registration thereof. That the term “Inexmoda” stands for “Instituto para la Exportación y la Moda”, which in Spanish means “Fashion and Export Institute” and that it only serves the purpose of identifying the Complainant and its business. That the incorporation of a well-known trademark into a domain name used to redirect Internet users to a pay-per-click web site shows the Respondent’s intention to capitalize on the Complainant’s reputation. That offering the disputed domain name for sale for a minimum bid of USD 500 is evidence of the Respondent’s registration and use of the disputed domain name in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings The Complainant must prove that the three elements of paragraph 4(a) of the Policy have been met: (i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests with respect to the disputed domain name; and (iii) the disputed domain name has been registered and used in bad faith. In view of the Respondent’ failure to submit a Response, the Panel shall decide this proceeding on the basis of the Complainant’s undisputed factual allegations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules, and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules (see General Mills, Inc., v. Velgut Group Business and Intl Commerce, S.A. de C.V.,WIPO Case No. DMX2012-0013; and Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk,WIPO Case No. D2002-0487). A. Identical or Confusingly Similar The Complainant has provided evidence showing that it owns trademark registrations for INEXMODA in Colombia, since 1993, and in other countries such as Ecuador, Mexico, Panama, Peru and Venezuela, in various classes. The Panel considers that the disputed domain name is identical to the Complainant’s trademark INEXMODA, as it incorporates said trademark in its entirety. The addition of the gTLD “.com” to the disputed domain name does not avoid the confusing similarity; therefore, it is without legal significance in the present case (see SAP SE v. Mohammed Aziz Sheikh, Sapteq Global Consulting Services,WIPO Case No. D2015-0565; Bentley Motors Limited v. Domain Admin / Kyle Rocheleau, Privacy Hero Inc.,WIPO Case No. D2014-1919; Compagnie Générale des Etablissements Michelin v. Gui He Xing,WIPO Case No. D2018-1446). The first element of the Policy has been met. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights 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 it did no acquire 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. The Complainant has argued that the Respondent is not associated with the Complainant, or that it has otherwise authorized or licensed the Respondent to use the trademark INEXMODA, or to register the disputed domain name. There is no evidence in the case file indicating that the Respondent is commonly known by the disputed domain name, or the trademark INEXMODA. The web site to which the disputed domain name resolves displays pay-per-click sponsored links, mostly related to fashion and clothing. All of these links are written in Spanish, and redirect Internet users to web pages with diverse advertisements and offers made available by third parties. Such links are closely related to the Complainant and include, among others, the following: “medellín”, “tendencias” (trends), “ropa moda” (clothing fashion), “catalogos de ropa de moda” (fashion clothing catalogs), “Ropa Mujer” (women’s clothing), “moda vestido” (dress fashion), “ferias” (exhibitions), “vestidos” (dresses) and “antioquia”. The consensus view of previous panels appointed under the Policy is that a web page that incorporates pay-per-click links is not to be considered as illegitimate per se; however, a pay-per-click model does not confer rights to, or legitimate interests to a respondent arising from a bona fide offering of goods or services, or from a legitimate, noncommercial, or fair use of the domain name itself (see Section 2.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”; see also Virgin Enterprises Limited v. LINYANXIAO aka lin yanxiao,WIPO Case No. D2016-2302). In the present case, the Respondent’s use of the disputed domain name to host pay-per-click links most of which are related to fashion, and which have an extremely close relationship with the Complainant, strongly suggests that the Respondent is using the disputed domain name with the intent to misleadingly divert customers looking for the Complainant and/or its services, for commercial gain. Such conduct cannot be deemed to have taken place in good faith, and therefore cannot confer any rights to, or legitimate interests over the disputed domain name (see Abbott Laboratories v. Hola Domains / Hola Dominios Limitada,WIPO Case No. D2017-2463;WIPO Case No. D2016-2302, ut supra). For these reasons, and in the absence of a Response from the Respondent, the Panel considers that the Complainant has prima facie proven that the Respondent has no rights to, or legitimate interests in the disputed domain name. The second element of the Policy has been met. 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 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 your 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 Respondent’s registration of the disputed domain name, which is identical to the Complainant’s trademark INEXMODA, and the implementation, in the web site to which said disputed domain name resolves, of pay-per-click links that are closely related to the Complainant and the fashion industry, strongly suggests that the Respondent knew about the Complainant, its trademark and activities, at the moment of registration of the disputed domain name. This evidences the Respondent’s registration in bad faith (see ENEL S.p.A. v. Liu Jinping,WIPO Case No. DTV2012-0005; Ipsen Pharma S.A.S. v. Admin - This Domain is for sale on Godaddy.com Escrow.com, Trnames Premium Name Services,WIPO Case No. D2018-0089). As to the use of the disputed domain name, the Panel is of the opinion that the Respondent is profiting from the reputation of the Complainant, its goodwill and its trademark INEXMODA, by creating a likelihood of confusion among Internet users who may presume that the disputed domain name, the web site to which it resolves, and the links associated thereto, correspond to the Complainant, or that they are somehow related to, sponsored by, affiliated with, or endorsed by said Complainant. Pursuant to paragraph 4(b)(iv) of the Policy, the intentional attempt to attract Internet users (and the actual deviation of traffic), for commercial gain, based on the creation of a likelihood of confusion with a complainant’s trademark, constitutes bad faith (see Abbott Laboratories v. Domain May Be For Sale, Check afternic.com Domain Admin, Whois protection, this company does not own this domain name s.r.o. / Hulmiho Ukolen, Poste restante,WIPO Case No. D2017-2124; Decathlon v. Contact Privacy Inc. Customer 0151988799 / Balticsea LLC,WIPO Case No. D2019-0698). The third element of the Policy has been met. 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 Kiyoshi Tsuru
Sole Panelist
Date: December 17, 2019
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