The Complainant is Chep Technology Pty Ltd, Chep Mexico, S. de R.L. de C.V., Mexico, represented by Jauregui y Del Valle, S.C., Mexico.
The Respondent is See PrivacyGuardian.org, United States of America (“United States”) / Hpone Pyae Tun, Myanmar / London Russian, Mexico. 2. The Domain Names and Registrars
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2021. On May 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 6, 2021 the Registrars transmitted by email to the Center its verification responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 7, 2021 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 May 13, 2021. 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 May 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 9, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 10, 2021. The Center appointed Edoardo Fano as the sole panelist in this matter on June 20, 2021. 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. The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties. Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to the Respondent”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a response from the Respondent. The language of the proceeding is English, being the language of the Registration Agreements, as per paragraph 11(a) of the Rules. 4. Factual Background The Complainant is Chep Technology Pty Ltd, an Australian Company, with its affiliated Mexican company Chep Mexico, S. de R.L. de C.V., operating in the field of managed, returnable and reusable packaging solutions, including pallets, and owning several trademark registrations for CHEP, among which the following ones in Mexico: - Mexican Trademark Registration No. 1374083 for CHEP, registered on June 7, 2013; The Complainant operates on the Internet at the main website “www.chep.com”, as well as at other websites, including “www.chep.com.mx”. The Complainant provided evidence in support of the above. According to the WhoIs records, the disputed domain name The Complainant states that the disputed domain names Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names since it has not been authorized by the Complainant to register the disputed domain names or to use its trademark within the disputed domain names, it is not commonly known by the disputed domain names and it is not making either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names. The Complainant submits that the Respondent has registered the disputed domain names in bad faith, since the Complainant’s trademark CHEP is distinctive and internationally known. Therefore, the Respondent targeted the Complainant’s trademark at the time of registration of the disputed domain names and the Complainant contends that the impersonation of the Complainant by the Respondent aimed to deceiving and attracting, for commercial gain, Internet users and to create a likelihood of confusion with the Complainant’s trademark as to the disputed domain names’ source, sponsorship, affiliation or endorsement, qualifies as bad faith registration and use. B. Respondent The Respondent has made no reply to the Complainant’s contentions and is in default. In reference to paragraphs 5(f) and 14 of the Rules, no exceptional circumstances explaining the default have been put forward or are apparent from the record. A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences, in accordance with paragraph 14(b) of the Rules, may be drawn (see, e.g., Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy,WIPO Case No. D2003-0109; SSL INTERNATIONAL PLC v. MARK FREEMAN,WIPO Case No. D2000-1080; ALTAVISTA COMPANY v. GRANDTOTAL FINANCES LIMITED et. al.,WIPO Case No. D2000-0848; Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total S.A.,WIPO Case No. D2007-0288). 6. Discussion and Findings Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed: (i) the disputed domain names are 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 names; and (iii) the disputed domain names have been registered and are being used in bad faith. A. Consolidation of Multiple Respondents The Complaint and the amendment to the Complaint were filed against two registrants, and the Complainant has requested consolidation of multiple respondents. No objection to this request was made by the Respondents. Pursuant to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2, “[w]here a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario”. The Panel may consider a range of factors to determine whether consolidation is appropriate, such as examining relevant registrant contact information, and any naming patterns in the disputed domain names, or other evidence of respondent affiliation that indicate common control of the disputed domain names. The Complainant notes that the content as well as the layout of the websites at the disputed domain names are identical, in both cases using the Spanish language, and both the disputed domain names are being used or were previously used to commit fraudulent activities by passing off as the Complainant’s Mexican official website. The Panel finds that there is sufficient evidence that the disputed domain names are subject to common control, and that it would be procedurally efficient, fair and equitable to all Parties to accept the Complainant’s consolidation request. The Panel further notes that the Respondents did not object to the consolidation request. The Panel therefore accepts the Complainant’s consolidation request. B. Identical or Confusingly Similar The Panel finds that the Complainant is the owner of the trademark CHEP both by registration and acquired reputation and that the disputed domain names Regarding the addition of the word “pallet(s)” and of the country name “mexico” the Panel notes that it is now well established that the addition of terms or letters to a domain name does not prevent a finding of confusing similarity between the disputed domain name and the trademark (see, e.g., Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti,WIPO Case No. D2005-0037; Red Bull GmbH v. Chai Larbthanasub,WIPO Case No. D2003-0709; America Online, Inc. v. Dolphin@Heart,WIPO Case No. D2000-0713). The addition of the descriptive word “pallet(s)” and of the country name “mexico” does not therefore prevent the disputed domain names from being confusingly similar to the Complainant’s trademark CHEP. It is also well accepted that a generic Top-Level Domain (“gTLD”), in this case “.com”, may be ignored when assessing the confusing similarity between a trademark and a domain name: see WIPO Overview 3.0, section 1.11. The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain names are confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i). C. Rights or Legitimate Interests The Respondent has failed to file a response in accordance with the Rules, paragraph 5. The Complainant in its Complaint, and as set out above, has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. It asserts that the Respondent, who is not currently associated with the Complainant in any way, is not using the disputed domain names for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services. The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain names. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain names, and the Panel is unable to establish any such rights or legitimate interests on the basis of the evidence in front of it. Moreover, the Panel finds that the composition of the disputed domain names carries a risk of implied affiliation. See WIPO Overview 3.0, section 2.5.1. The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied. D. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that “[…] for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name 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 the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or (ii) that [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) that [the Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) that by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [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 [the Respondent’s] website or location or of a product or service on [the Respondent’s] website or location”. Regarding the registration in bad faith of the disputed domain names, the reputation of the Complainant’s trademark CHEP in the field of managed, returnable and reusable packaging solutions, including pallets, is clearly established and the Panel finds that the Respondent likely knew of the Complainant and deliberately registered the disputed domain names, especially because on the websites at the disputed domain names the Respondent was passing itself off as the Complainant. The Panel further notes that the disputed domain names are also used in bad faith since on the relevant websites the Complainant’s trademark and logo were displayed along with the same layout as the Complainant’s Mexican official website, with the purpose of intentionally attempting to create a likelihood of confusion with the Complainant’s trademark as to the disputed domain names’ source, sponsorship, affiliation or endorsement. The above suggests to the Panel that the Respondent intentionally registered and is using the disputed domain names in order to create confusion with the Complainant’s trademark and attract, for commercial gain, Internet users to its websites in accordance with paragraph 4(b)(iv) of the Policy. The Panel finds that the Complainant has presented evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain names in bad faith. The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied. 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 names Edoardo Fano
- Mexican Trademark Registration No. 1429243 for CHEP, registered on January 24, 2014.
Sole Panelist
Date: June 22, 2021
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