The Complainant is Cervecería Modelo de México, S. de R.L. de C.V., Mexico, represented by Olivares & Cia, Mexico.
The Respondent is Karla Paola Escobar Hernández, Mexico. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 15, 2020. On May 15, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 18, 2020, 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 May 27, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Center sent an email communication to the Complainant on May 27, 2020 regarding the language of the proceedings. The Complainant filed an amendment to the Complaint on May 30, 2020. 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 June 2, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 22, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 24, 2020. The Center appointed Reynaldo Urtiaga Escobar as the sole panelist in this matter on July 10, 2020. 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 Founded in 1925, the Complainant is one of Mexico’s leading beer companies and since 2013, part of one of the world’s largest brewing group Anheuser-Busch InBev. The Complainant has presence in 180 countries. In Mexico, the Complainant operates 10 breweries, including seven industrial plants, two craft plants and one experimental plant, in addition to 10 vertical operations plants (stained glass, malting plants, cans and plastic caps). The Complainant has 17 national brands, the most popular ones being Corona Extra, Modelo Especial, Victoria, Pacífico and Negra Modelo. The Complainant holds numerous trademark registrations worldwide, including: - Mexican trademark registration No. 879695 for GRUPO MODELO (word mark), granted April 28, 2005, in connection with goods and services comprised in international class 32 (beer, mineral and sparkling water, other non-alcoholic beverages, fruit juices and beverages, and other preparations for making beverages); and - Mexican trademark registration No. 1650672 for GRUPO MODELO (word mark and logo), granted July 4, 2016, in connection with services comprised in international classes 35 (car dealer services, including online car trading through websites, apps, and computer networks). The disputed domain name was created on November 5, 2019. The disputed domain name used to be associated with a website deceptively advertising the sale of fleet vehicles purportedly owned by the Complainant. At the time of writing this Decision, the website at the disputed domain name is no longer active. 5. Language of the Proceeding The Complaint was filed in English given that the language of the registration agreement is English, as acknowledged by the Complainant. Regardless, the Complainant requests that the language of the proceeding be changed to Spanish, per the following two reasons: i) the disputed domain name includes the term “ofertas”, which is the Spanish word for “offers” 1; The pertinent rule is found in paragraph 11(a) of the Rules, which reads: “11. Language of Proceedings (a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.” The Panel notes in particular that: i) the disputed domain name includes terms in Spanish, and the contents of Respondent’s website were in Spanish. This factor weighs in favor of Spanish; ii) the Respondent did not communicate regarding the Complainant’s request to replace English with Spanish in this proceeding. This factor is inconclusive; iii)the registration agreement for the disputed domain name is only available in English. This factor weighs in favor of English; iv) there is no record of prior correspondence between the parties in Spanish or English. This factor is inconclusive; v) the Complainant’s demand requires the Panel to either: a) request the Complainant to have its Complaint translated into Spanish, or b) translate the Complaint into Spanish by itself. This factor weighs in favor of English. In the interest of procedural efficiency, and noting that a decision in English would not cause an unfair prejudice to any of the parties, the Panel holds, on balance, that English shall continue to be the language of this proceeding. 6. Parties’ Contentions A. Complainant In summary, the Complainant contends as follows: (i) The Complainant’s GRUPO MODELO mark, registered as of April 28, 2015, predates the disputed domain name, registered on November 5, 2019; (ii) There is no doubt that the disputed domain name is confusingly similar to the Complainant’s GRUPO MODELO marks as the disputed domain name precisely consists of the mark GRUPO MODELO and the descriptive term “ofertas”; (iii) According to several UDRP decisions, descriptive terms included in domain names cannot constitute elements which differentiate domain names with respect to trademarks; (iv) It is also widely acknowledged that graphic elements of the marks and domain name suffixes should not be considered for the purposes of a comparison under the first element of Policy paragraph 4(a); (v) The Respondent lacks rights or legitimate interests in the disputed domain name under the Policy because before any notice of the dispute to the Respondent, there is no evidence of the Respondent’s use of, or demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; (vi) Rather than making a bona fide use of the disputed domain name, the Respondent’s website impersonates the Complainant for fraudulent purposes by offering for sale cars supposedly owned by the Complainant; (vii) The Respondent’s website also reproduces the Complainant’s marks GRUPO MODELO, CORONA EXTRA, M MONTEJO, MODELO ESPECIAL, VICTORIA, NEGRA MODELO, including their graphic elements, thus taking unfair advantage of the Complainant’s reputation and well-known marks to commit fraud through phishing activities; (viii) The Respondent, as an individual or organization is not known at all by the disputed domain name, and has not even applied for a trademark in Mexico, as demonstrated by the online trademark searches carried out by the Complainant at the Mexican Trademark Office; (ix) The Respondent operates a pirated website offering services as if it were the Complainant in order to attract users to the Respondent’s website, making them believe that said website is operated by or somehow affiliated with the Complainant; (x) The Respondent is seeking to illegally profit from an alleged auction or sale of vehicles using the Complainant’s company name and marks; (xi) The Respondent’s website reproduces the Complainant’s trade dress and image; (xii) The foregoing circumstances altogether demonstrate that the disputed domain name was registered in bad faith and has been used in bad faith within the meaning of the Policy. B. Respondent The Respondent did not reply to the Complaint. 7. Discussion and Findings According to paragraph 4(a) of the Policy, in order to succeed in this administrative proceeding, the Complainant must prove that: (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 was registered and is being used in bad faith. These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules, and any other rules or principles of law that the Panel deems applicable. A. Identical or Confusingly Similar The first element has a low threshold merely serving as a gateway requirement under the Policy. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) (the standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name). The Complainant holds trademark registrations for GRUPO MODELO, including: - Mexican trademark No. 879695 (word mark), registered on April 28, 2005, in connection with goods and services comprised in international class 32 (beer, mineral and sparkling water, other non-alcoholic beverages, fruit juices and beverages, and other preparations for making beverages); and - Mexican trademark No. 1650672 (word mark and logo), registered on July 4, 2016, in connection with services comprised in international classes 35 (car dealer services, including online car trading through websites, apps, and computer networks). These two trademark registrations are in full force and effect. Pursuant to section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. This is the case here as the Panel clearly recognizes at first blush the GRUPO MODELO mark within the disputed domain name, despite that said mark sits side-by-side with “ofertas” 2 , a term being descriptive in Spanish (equivalent to “specials”). The Panel thus finds that the disputed domain name is confusingly similar to the GRUPO MODELO marks on which the Complainant has rights. Ultimately, the Panel holds that the Complainant has met the threshold of Policy paragraph 4(a)(i). B. Rights or Legitimate Interests The second element under the Policy is that the Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). Paragraph 4(c) of the Policy provides that “any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii): (i) before any notice to you [the respondent] of the dispute, your [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) you [the respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you [the respondent] have acquired no trademark or service mark rights; or (iii) you [the respondent] are 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.” As noted in section 2.1 of the WIPO Overview 3.0, the onus is on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the disputed domain name. However, because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see also, e.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306). The Complainant submits that the Respondent lacks rights or legitimate interests per the Policy as it has not applied for trademark registration in Mexico of the term “Grupo Modelo”, nor has it used the disputed domain name in connection with a bona fide offering of goods or services. The Panel regards the above factual submissions to be credible in light of the submissions and evidence on file, and in view of the goodwill attached to GRUPO MODELO as the Complainant’s badge of origin. At any rate, those submissions remain uncontested by the Respondent. Tellingly, because the Complainant has made a showing that the Respondent was impersonating the Complainant with the aim of scamming Internet users by offering on sale nonexistent fleet vehicles supposedly owned by the Complainant, the Panel is convinced that the Respondent does not possess the requisite rights or legitimate interests to retain control over the disputed domain name. See section 2.13.1 of the WIPO Overview 3.0 (panels have categorically held that the use of a domain name for illegal activity, such as impersonation/passing off, or other types of fraud, can never confer rights or legitimate interests within the meaning of the Policy). The Complainant has proven the second limb of Policy paragraph 4(a). C. Registered and Used in Bad Faith Pursuant to Policy, paragraph 4(a)(iii), in order to be granted relief, the Complainant must show that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets forth the following non-exhaustive grounds of bad faith registration and use: “(i) circumstances indicating that you [the respondent] have registered or 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 [the respondent’s] documented out-of-pocket costs directly related to the domain name; or (ii) you [the respondent] have 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 you [the respondent] have engaged in a pattern of such conduct; or (iii) you [the respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you [the respondent] have intentionally attempted to attract, for commercial gain, Internet users to your [the respondent’s] 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 your [the respondent’s] website or location or of a product or service on your [the respondent’s] website or location.” For one thing, the GRUPO MODELO mark is associated with one of Mexico’s top beer breweries, for another, the Complainant is well-known internationally as it exports eights brands and has presence in 180 countries.3 The Panel takes notice that, prior to its merger with Anheuser-Busch InBev in 2013, Grupo Modelo was already the third-largest brewer of beer sold in the United States.4 Since the merger, Grupo Modelo has been part of one of the world’s largest brewing groups. As a result of its domestic and international reputation, “Grupo Modelo” has become a household name in Mexico. It follows that the Respondent, who is domiciled in Mexico, abused the Complainant’s trademark rights by registering the disputed domain name, to the extent that the latter incorporates the GRUPO MODELO mark, which is widely known in Mexico, without the Complainant’s consent, and to take advantage of the Complainant’s trademark. See section 3.1 of the WIPO Overview 3.0 (bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark). The Respondent’s bad faith is further evidenced by the disputed domain name’s use in connection with a website that impersonated the Complainant with a clear intent of deceiving, defrauding, and stealing personal information from the Internet users landing on the Respondent’s portal, having been misled into thinking that they had reached the Complainant’s website instead. The Complainant has produced screenshots of the Respondent’s website, as displayed prior to the filing of the Complaint. The screenshots show: i) The Complainant’s trademarked GRUPO MODELO logo5 ; This evidence clearly and convincingly demonstrate that the Respondent passed off as the Complainant to scam Internet users by misleading them into thinking that they could buy the Complainant’s second-hand vehicles at a bargain price, and the Complainant’s beer products wholesale at 50% discount. The use of a disputed domain name for scam and impersonation purposes is conclusive evidence of bad faith under the Policy. See Beam Suntory Inc. v. Name Redacted,WIPO Case No. D2018-2861 (given respondent’s attempt to impersonate complainant and in light of complainant’s long use of its marks, it is more than likely that respondent solely registered the disputed domain name for fraudulent purposes); see also Rakuten, Inc. v. Whois Agent, Whois Privacy Service, Inc. / MARVIN RUFF,WIPO Case No. D2018-1225 (the disputed domain name In fact, the Respondent’s fraudulent scheme has already been equated with cybersquatting in UDRP cases filed by other Mexican trademark holders. See for instance Comisión Federal de Electricidad v. Juan Martinez,WIPO Case No. D2016-1374 (the practice of scamming users by offering them second-hand vehicles supposedly owned by a reputable company like the complainant, at a remarkably low price, is well documented in the Mexican media). All these circumstances compel the Panel to find that the Respondent registered and has been using the disputed domain name in bad faith within the purview of the Policy. The Complainant has carried its burden in relation to paragraph 4(a)(iii) of the Policy. 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 Reynaldo Urtiaga Escobar 1 In the context of this dispute, the Panel considers that a more accurate translation is “specials”.
ii) the content of the website linked to the disputed domain name is in Spanish;
ii) Pictures of the Complainant’s CORONA EXTRA beer bottle;
iii) Pictures of the Complainant’s CORONA EXTRA beer pack;
iv) Pictures of bottles and cans of 16 different beer brands marketed by the Complainant;
v) An advertisement offering the sale of Grupo Modelo’s fleet vehicles at “incredible prices”;
vi) An advertisement offering the Complainant’s beer products wholesale at 50% discount;
vii) A picture of a bus offering free shipping of the Complainant’s beer products;
viii) A notice offering warranty and 2-year insurance for the vehicles put on sale;
ix) A series of pictures of vehicles supposedly put on sale by the Complainant;
x) Telephone numbers to place purchase orders for the Complainant’s vehicles and beer products.
Sole Panelist
Date: July 23, 2020
Full & Egal Universal Law Academy