The Complainant is Red Voucher Systems, S.A. De C.V., Mexico, represented internally.
The Respondents are Arcadi Magre Aguilar, España / Gustavo Fabián Ortega González, Mexico / Armando Mejías Ochoa, Mexico / Red Ticket Entertainment, S.A. de C.V., Mexico, all represented by Jeovanna Velasco y Velasco, Mexico / Jeff Douglas, Nuetech LLC, United States of America. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 16, 2020. On June 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 22, 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 June 29, 2020 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 June 29, 2020. The Center sent an email communication to the parties in English and Spanish on June 29, 2020 regarding the language of the proceeding, as the Complaint has been submitted in Spanish and the language of the registration agreement for the disputed domain name is English. The Complainant submitted a translated Complaint on June 29, 2020. 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 Respondents of the Complaint, and the proceedings commenced on July 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 27, 2020. The Response was filed with the Center on July 27, 2020. The Center appointed Luca Barbero as the sole panelist in this matter on August 11, 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 The Complainant is a Mexican company active in the marketing of physical and electronic coupons for access to sports, cultural, cinematographic, and entertainment events. The Complainant is the owner of the following trademark registrations for RED COMPANIES: - Mexican trademark registration No. 1756204 for RED COMPANIES (figurative mark), filed on January 20, 2017 and registered on May 19, 2017, in international class 41; - Mexican trademark registration No. 1766792 for RED COMPANIES (figurative mark), filed on January 20, 2017 and registered on June 22, 2017, in international class 41. The Complainant provides information about its RED COMPANIES services at the domain name According to the records, on March 9, 2015, Mr. Luis Villavicencio Padilla (currently partner of the Complainant’s company), and Arcadi Magre Aguilar, Gustavo Fabián Ortega González, and Armando Mejías Ochoa, incorporated the company Red Ticket Entertainment, S.A. de C.V. (hereinafter, “the first Respondent”), a company operating in the field of online marketing and sale of physical and electronic coupons for access to sports, cultural, cinematographic and entertainment events. In November 24, 2015, Mr. Villavicencio Padilla set up the company Red Voucher Systems, S.A. de C.V., i.e. the Complainant in the present proceeding, offering the same type of services as those offered by Red Ticket Entertainment, S.A. de C.V. The disputed domain name The Complainant contends that, since its incorporation and over the years, with the growth of the Complainant’s business in Mexico and various Latin American countries (Guatemala, El Salvador, Costa Rica, and Colombia), the Complainant registered a considerable number of domain names under which trademarks, brands and products were consequently expanded, generating a conglomerate scheme of brands and domains under the RED COMPANIES brand. The Complainant submits that disputed domain name With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that the Respondents never made commercial use or exploitation of the disputed domain name. It also states that, although the disputed domain name was registered prior to the registration of the Complainant’s RED COMPANIES trademarks, this does not necessarily imply that the Respondents have a legitimate right over it, especially if they do not have trademark rights associated with its commercial use. The Complainant further contends that there is no proof that the Respondents have used the disputed domain name for legitimate commercial purposes or in good faith, that they have ever been known publicly by the disputed domain name and that they ever made a legitimate noncommercial or fair use of the disputed domain name, without the intent, for commercial gain, to misleadingly divert consumers or tarnish the Complainant’s trademark. With reference to the circumstances evidencing bad faith, the Complainant indicates that, since the disputed domain name is pointed to a parking page with promotional links and has never been used since its registration, there is reason to believe that the registration occurred with the intent to prevent the Complainant from promoting, publishing and marketing its goods and services under the RED COMPANIES trademarks. The Complainant emphasizes that, despite the attempts to purchase the disputed domain name in good faith, the first Respondent never answered or acknowledged the Complainant’s request. The Complainant further underlines that the Respondents do not intend to use the disputed domain name on a daily basis for use in connection with a business protected by a trademark, as the Complainant does. The Complainant concludes that the Respondents are preventing the Complainant, as owner of the trademark RED COMPANIES, from reflecting its trademark in said domain name, affecting the Complainant’s commercial reputation and the rights associated with its trademarks and creating a likelihood of confusion as to the source and affiliation or endorsement of the correspondent website. B. Respondents The first Respondent replied to the Complainant’s contentions, denying all the allegations and stating that not only it is not the owner of the disputed domain name, but that the Complainant’s claims on equivocal grounds, registration in bad faith and possible fraud, are unfounded. The first Respondent highlights that, despite having left Red Ticket Entertainment, S.A. de C.V., the Complainant to date is still an active shareholder of the aforementioned company and, on January 9, 2019, it even requested that the Ordinary General Shareholder’s Meeting, planned for May 8, 2019, be nullified. Moreover, it is underlined that to date there is no legal documentation to certify the Complainant no longer works with and for Red Ticket Entertainment, S.A. de C.V. The first Respondent further highlights that it did not register, and does not own, the disputed domain name, which was indeed registered by the second Respondent, based in the United States of America. Despite this and despite the Center’s notification and request to update the Complaint, the first Respondent highlights that the Complainant continued to falsely assert that the disputed domain name had been registered by the first Respondent. With reference to the confusing similarity between the disputed domain name and the Complainant’s registered trademark, the issues of rights or legitimate interests in respect of the disputed domain name and to the circumstances evidencing bad faith, the first Respondent denies all the Complainant’s assertions, mentioning that, since the disputed domain name was never registered by the first Respondent, there is indeed no need to address the issues. Lastly, the first Respondent further claims that, considering how the Complainant has conducted its business, by opening a new company with a similar name and selling the same type of services, whilst still maintaining its status as shareholder and partner in the Red Ticket Entertainment, S.A. de CV., the Complainant itself should be seen as acting in bad faith. The second Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that a complainant must prove each of the following: (i) that the disputed domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) that the respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith. 6.1. Preliminary procedural issues A. Language of the Proceeding Pursuant to paragraph 11(a) of the Rules, “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”. In the case at hand, the language of the Registration Agreement of the disputed domain name is English. The Complaint was filed in Spanish. Upon completing the Registrar’s verifications, the Center sent an email communication to the parties about the language of the proceeding requesting them to comment on the issue. The Complainant submitted a translated Complaint in English on June 29, 2020 whilst the first Respondent filed its Response in Spanish. No response was received by the second Respondent. In view of the circumstances of the case, the Panel finds that English is the appropriate language of this proceeding and will thus proceed to render the Decision in English. However, as highlighted above, the Panel – which is fluent in Spanish - also deemed appropriate to consider the first Respondent’s submission without requiring any translation, especially in light of the fact that such Response was essentially aimed at clarifying that the disputed domain name was not registered, and is not used, by the first Respondent. B. Identification of proper Respondent The Complaint was originally filed against the first Respondent. Upon receipt of the Center’s Registrar Verification request, the concerned Registrar disclosed the full data of the underlying registrant according to its records, which was identified as the second Respondent. The Complainant thus filed an amended Complaint adding the second Respondent, without anyway providing any further information about the possible relationship between the second and the first Respondents. The Panel notes that, according to the evidence on record, there is no evidence that the disputed domain name might have been ever registered and/or used by the first Respondent. Moreover, there is no element from which it could be inferred that the second Respondent might actually have established any relationship with the first Respondent. Indeed, the second Respondent’s contact details significantly differ from the ones of the first Respondent, being the second Respondent located in another country, and no commonalities in the contact information can be found. In view of the above, the Panel finds that the second Respondent is the actual holder of the disputed domain name in this case. Therefore, the Panel’s assessment of the three substantive requirements prescribed by paragraph 4(a) of the Policy will be conducted with regard to the second Respondent, whilst the first Respondent appears not to be involved in the registration and use of the disputed domain name. 6.2 Substantive issues A. Identical or Confusingly Similar As highlighted above, the Complainant has provided evidence of ownership of two figurative trademark registrations for RED COMPANIES in Mexico. As indicated in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the first element functions primarily as a standing requirement, and the threshold test for confusing similarity typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. Moreover, as stated in Section 1.10 of the WIPO Overview 3.0, “Panel assessment of identity or confusing similarity involves comparing the (alpha-numeric) domain name and the textual components of the relevant mark. To the extent that design (or figurative/stylized) elements would be incapable of representation in domain names, these elements are largely disregarded for purposes of assessing identity or confusing similarity under the first element. Such design elements may be taken into account in limited circumstances, e.g., when the domain name comprises a spelled-out form of the relevant design element. On this basis, trademark registrations with design elements would prima facie satisfy the requirement that the complainant show “rights in a mark” for further assessment as to confusing similarity. In the case at hand, the denominative portion of the Complainant’s trademark RED COMPANIES is entirely reproduced in the disputed domain name, with the mere addition of the TLD “.com”, which is commonly disregarded under the first element confusing similarity test (section 1.11 of the WIPO Overview 3.0). In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is identical to the trademark in which the Complainant has established rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests It is well-established that the burden of proof lies on the complainant. However, satisfying the burden of proving a lack of the respondent’s rights or legitimate interests in respect of the domain name according to paragraph 4(a)(ii) of the Policy is potentially onerous, since proving a negative can be difficult considering such information is often primarily within the knowledge or control of the respondent. Accordingly, in line with previous UDRP decisions, it is sufficient that the complainant show a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the respondent. If the respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. In the case at hand, as mentioned above, the first Respondent appears to have nothing to do with the disputed domain name, while the second Respondent, which is to be considered the actual domain name holder, has not filed a Response, thus failing to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. The Panel notes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the second Respondent and the Complainant. The second Respondent is not a licensee of the Complainant, nor has it otherwise obtained any authorization to use the Complainant’s trademark. In addition, there is no evidence on record, that the second Respondent might be commonly known by the disputed domain name. Lastly, as highlighted above, the disputed domain name has been pointed to a parking page with sponsored links. The Panel finds that such use of the disputed domain name, in itself, does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name without intention to misleadingly divert the consumers or to tarnish the Complainant’s trademark. Therefore, in absence of a Response, the Panel finds that the Complainant has met its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel finds that the Complainant has failed to demonstrate that the disputed domain name was registered and used in bad faith. Indeed, the disputed domain name was registered on December 22, 2012, three years before the Complainant came into existence and more than four years before the Complainant filed its first applications for registration of the trademark RED COMPANIES in Mexico. Therefore, the Panel finds that the second Respondent could not have been aware of the Complainant and its trademark at the time of the registration of the disputed domain name. The Panel also finds that there is no element in this case from which it could be inferred that the second Respondent, on balance of probabilities, intended to target the Complainant and its trademark through the registration and use of the disputed domain name. In view of the above, the Panel finds that the Complainant has failed to demonstrate that the disputed domain name was registered and used in bad faith according to paragraph 4(a)(iii) of the Policy. 7. Decision For the foregoing reasons, the Complaint is denied. Luca Barbero
Sole Panelist
Date: August 25, 2020
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