The Complainant is Estafeta Mexicana, S.A. De C.V, Mexico, represented by Olivares & Cia, Mexico.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc, Panama / Brant Crabk, France. 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 24, 2020. On June 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 25, 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 27, 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 amendment to the Complaint on July 3, 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 July 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 9, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 11, 2020. The Center appointed Rodrigo Azevedo as the sole panelist in this matter on August 20, 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 one of the leading packaging delivery companies in Mexico, with presence in numerous countries around the world. The Complainant operates under the trademark ESTAFETA. The trademark ESTAFETA was registered by the Complainant in several regions of the world, including in Mexico (registration numbers 2042804 and 546615, with use priority respectively of August 21, 1979 and January 4, 1993 and registered on September 26, 2019 and April 24, 1997, respectively). The Complainant is also the holder of the domain name The Respondent registered the disputed domain name The Panel accessed the disputed domain name on September 1, 2020, at which time the disputed domain name pointed to a parking page with pay-per-click links to online services and stores. 5. Parties’ Contentions A. Complainant The Complainant makes the following contentions: - The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The disputed domain name constitutes a misspelling of the Complainant’s trademark ESTAFETA or domain name - The Respondent has no rights or legitimate interests in respect of the disputed domain name. The disputed domain name is inactive and “passively held” and, as such, has not been used in connection with a bona fide offering of goods and services. The Respondent is taking unfair advantage of the Complainant’s reputation and well-known marks to commit frauds from phishing activities. Numerous email messages have been sent from the disputed domain name trying to impersonate the Complainant, signed off with the name of the Complainant’s employees, asking for money transfers. - The disputed domain name was registered and is being used in bad faith. The Respondent is intentionally attempting to attract for commercial gain, Internet users for his website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsements of the Respondent’s website. The Respondent has been using the disputed domain name for fraudulent activities, in order to impersonate the Complaint and solicit money from the Complainant’s customers. The Respondent is trying to use the disputed domain name and the related email addresses to confuse the Complainant’s customers into believing that they are legitimate emails originated from the Complainant, in order to defraud the Complainant’s customers. Before the filing of this proceeding, the Complainant has initiated another one against the same Respondent, which is now recidivist in committing frauds against the Complainant’s customers. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements: (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. A. Identical or Confusingly Similar The Panel notes that “estafeta” is a term directly connected with the Complainant’s packaging delivery services. Annexe 6 to the Complaint shows trademark registrations for ESTAFETA obtained by the Complainant with priority as early as in 1979. The disputed domain name differs from the Complainant’s trademark ESTAFETA merely by the replacement of the letter “f” by the letter “t”, as well as by the addition of the generic Top-Level Domain (“gTLD”) “.com”. The Panel concludes that such misspelling of the Complainant’s trademark characterizes what is commonly called typosquatting, a kind of cybersquatting in which a respondent registers a domain name in order to take advantage of typing errors eventually made by Internet users seeking the complainant’s commercial website (see CPP, Inc. v. Virtual Sky,WIPO Case No. D2006-0201). It is also already well established that the addition of a gTLD extension such as “.com” is typically irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark. As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks, and that the Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate a right or legitimate interest in a domain name: (i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or (ii) the respondent has been commonly known by the domain name; 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 at issue. Based on the Respondent’s default and on the evidence provided in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not licensed or authorized the usage of its trademarks to the Respondent, and it does not appear from the present record that the Respondent is commonly known by the disputed domain name. The Panel also notes that the present record provides no evidence to demonstrate the Respondent’s intent to use or to make preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the Complainant showed that the disputed domain name was recently used in connection with phishing and fraudulent schemes, aiming to obtain money transfers from the Complainant’s customers. Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent has 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 documented out-of-pocket costs directly related to the domain name; or (ii) the respondent 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 its website or location or of a product or service on its website or location. When the disputed domain name was registered by the Respondent in 2020, the trademark ESTAFETA was already directly connected to the Complainant’s packaging delivery services for decades. The disputed domain name is comprised of a misspelling version of the Complainant’s trademark ESTAFETA. The Respondent has not provided any justification for the registration of a domain name containing a minor variation of a famous third-party trademark. The Respondent’s most recent use of the disputed domain name in connection with a pay-per-click scheme may have potentially generated revenues and enhanced the likelihood of confusion with the Complainant’s trademark. Previous UDRP decisions have considered this type of use of a domain name sufficient to demonstrate bad faith. For reference on the subject, see Serta Inc. v. Charles Dawson,WIPO Case No. D2008-1474; see also Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415. Furthermore, in the Panel’s view, the circumstance that the Respondent has used the disputed domain name in connection with phishing and fraudulent schemes (as demonstrated by the Complainant) is enough to support a finding of bad faith registration and use of the disputed domain name by the Respondent in the present case. Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also satisfied the third element 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 Rodrigo Azevedo
Sole Panelist
Date: September 3, 2020
Full & Egal Universal Law Academy