The Complainants are Mercado Libre, Inc., Argentina; Mercado Libre SRL, Argentina; Mercado Libre Chile, Ltda., Chile; Mercado Libre, S. de R. L. C.V., Mexico; Mercado Libre Venezuela, S.R.L., Venezuela (Bolivarian Republic of); Ebazar.com.br, Ltda., Brasil; Tech Fund, S.R.L., Urugay, represented by Marval O´Farrell & Mairal, Argentina.
The Respondent is Alex Mariasov, United States of America (“United States”). 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 31, 2021. On May 31, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 17, 2021, 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 18, 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 June 22, 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 June 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 12, 2021. The Response was filed with the Center on July 1, 2021. The Center appointed Nick J. Gardner as the sole panelist in this matter on July 26, 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. 4. Factual Background The Complainants are all members of the Mercado Libre group of companies which provide e-commerce platforms in different countries in South and Central America. Complainant Mercado Libre Inc. is the parent company and the other Complainants are various subsidiaries of the parent. The Mercado Libre e-commerce platforms collectively make up the largest e-commerce system in Latin America, used by more than 320 million users to advertise, sell, buy, pay for and send their goods and services over the Internet. Mercado Libre Inc. is listed on the NASDAQ stock exchange and, since 2017, has been part of the NASDAQ 100 Index. The Mercado Libre group’s systems use a service designated as Mercado Pago for payment processing which to date has processed over 838 million transactions worth USD 28 billion. Mercado Libre’s platform is the most visited e-commerce site in Latin America, with the highest number of registered users in Argentina, Brazil, Chile, Colombia, Costa Rica, Ecuador, Mexico, Peru, Uruguay and Venezuela (Bolivarian Republic of). Mercado Libre’s solutions are also available in Costa Rica, Ecuador, Bolivia (Plurinational State of), El Salvador, Guatemala, Honduras, Nicaragua, Panama, Paraguay and the Dominican Republic The Complainants collectively own numerous different trademark registrations for the word MERCADO LIBRE, including for example Argentinian Trademark Registration No. M2286447 for MERCADO LIBRE in stylised form design, registered on January 28, 2000. These trademarks are referred to as the “MERCADO LIBRE trademarks” in this decision. The Complainants operate on the Internet at the main website “www.mercadolibre.com”, as well as with many other generic Top-Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”) including the trademark MERCADO LIBRE. According to the WhoIs records, the Disputed Domain Name was registered on July 17, 2018. It appears the Respondent acquired it at a subsequent date though the Panel does not know when that was. When the Complaint was filed the Disputed Domain Name redirected to an automatically generated page containing “pay per click” (“PPC”) links to third party websites. 5. Parties’ Contentions A. Complainants The Complainants set out in some detail their case as to why a claim made by multiple complainants is appropriate. In essence, they say that they have a common grievance against the Respondent because they share a common legal interest in the trademark rights on which the Complaint is based as a result of their affiliation to the same corporate group. They also say it would be equitable and procedurally efficient to permit the consolidation. The Complainants cite several previous Policy decisions in support of their arguments in this regard. The Complainants state that the Disputed Domain Name The Complainants say that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name since it has not been authorized by the Complainants to register the Disputed Domain Name or to use the MERCADO LIBRE trademark within the Disputed Domain Name, it is not commonly known by the Disputed Domain Name, nor is it making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Disputed Domain Name. The Complainants submit that the Respondent has registered the Disputed Domain Name in bad faith, since the Complainants’ trademark MERCADO LIBRE is distinctive and internationally known. Therefore, the Respondent targeted the Complainants’ trademark at the time of registration of the Disputed Domain Name and the Complainants contend that the linking of the Disputed Domain Name to a PPC website qualifies as bad faith registration and use. B. Respondent The Response is in the form of a short email which reads as follows: “I bought the domain name, mercadolibre.info, on a GoDaddy expired auction. I bought it because it has 2 dictionary words in it, and I wanted to add them to my collection portfolio. I have never used the domain, and the parking page you see was from the previous owner and from the previous registrar. I was not aware that the previous owner’s DNS would be transferred to GoDaddy. I was sure that GoDaddy would put their default DNS once the domain was purchased thru the auction. Once the lock on the domain is lifted, I will remove this parking page. I have never heard about the “mercadolibre” brand. It is not popular here in the USA. I never used the domain and will never use it to infringe/harm the “mercadolibre” mark”. The Respondent also added to the Response by e mail dated July 10, 2021 the following “I want to add to my response that I have never put this domain for sale, I have never put this domain for lease, I have never contacted anyone regarding selling this domain or use this domain name. I only bought it at the GoDaddy auction, and that’s it”. 6. Discussion and Findings Procedural Matters - Consolidation The Panel accepts the Complainants’ submission that for the purposes of this dispute, the interests of the Complainants are co-extensive, and their grievance against the Respondent arises from common legal interests. The Panel agrees that it is equitable and procedurally efficient to consolidate the claims of the Complainants. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), Section 4.11 and panel decisions cited therein. Substantive Matters To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that: (i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; (iii) the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar Most or possibly all of the MERCADO LIBRE trademarks appear to comprise the words Mercado Libre in association with a device, or in stylised form. In these circumstances, the Panel concludes the Disputed Domain Name is similar to each of the above trademarks. Similarity between a domain name and a device mark which includes words or letters is a readily accepted principle where the words or letters comprise a prominent part of the trademark in question – see for example EFG Bank European Financial Group SA v Jacob Foundation,WIPO Case No. D2000-0036 and Sweeps Vacuum & Repair Centre, Inc. v Nett Corp,WIPO Case No. D2001-0031. It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.info”, does not affect the disputed domain name for the purpose of determining whether it is identical or confusingly similar – see for example Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429. Accordingly, the Panel finds that the Disputed Domain Name Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name: (i) before any notice to the respondent of the dispute, 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) the respondent has been commonly known by the domain name, even if the respondent has acquired no trade mark or service mark rights; or (iii) the respondent is making a legitimate non-commercial 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. None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the MERCADO LIBRE trademark. The Complainant has prior rights in the MERCADO LIBRE trademark which precede the Respondent’s registration of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see for example Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455). The Panel finds that the Respondent has failed to produce any evidence to establish his rights or legitimate interests in the Disputed Domain Name. Accordingly, the Panel finds the Respondent has no rights or any legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled. C. Registered and Used in Bad Faith Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises: “(i) circumstances indicating that you have registered or you have 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) you 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 have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”. In considering this issue the Panel has had regard to the matters set out in the Response – see above. It is correct that the Disputed Domain Name comprises two dictionary Spanish words in combined form – which translate into English as “marketfree”. The Panel also accepts that whilst the evidence establishes the term “mercadolibre” is well known in Latin America as relating to the Complainants there is insufficient evidence to show that is the case in the US where the Respondent resides. It does not however find it plausible that the Respondent had no knowledge of the Complainants when he acquired the Disputed Domain Name. Having regard to the factual background (see above) and in accordance with the position noted in section 4.8 of WIPO Overview 3.0 the Panel has performed limited factual research comprising Google searches carried out in the United Kingdom via both “google.co.uk” and “google.com” for the terms “mercado libre” and “mercadolibre”. In all cases all of the results returned (over at least the first several pages of the search results) relate to the Complainants and their business. There is no evidence before the Panel of any other person using the term “mercadolibre” or any variation thereof for a business. The Panel is conscious that proceedings under the UDRP are of a limited and restricted nature, do not involve oral hearings, discovery or cross examination, and hence are only applicable to clear cut cases, and it is not usually appropriate to decide disputed questions of fact or matters of truth or falsehood. That does not however mean the Panel cannot reach a conclusion as to the veracity of a case that is being advanced where the only evidence that is provided is in the form of conclusory statements that are inherently not credible, and which are not supported by relevant corroborative or third party evidence. The Panel considers this to be such a case. Absent any credible alternative explanation from the Respondent (and none is provided) the Panel thinks it more likely than not that the Respondent would have carried out at least some basic searches of the term “mercadolibre” before deciding to bid for the Disputed Domain Name at an expired auction. Assuming he did so it seems more likely than not that the results would have alerted him to the Complainants and their business. Not only the Respondent has not given any explanation of what searches he carried out when he acquired the Disputed Domain Name, he has not explained why he was interested in a name comprising two Spanish words, what (if any) use he contemplated of those words in conjunction with the “.info” gTLD, or any other information explaining why he was interested in the Disputed Domain Name independently of any knowledge of the Complainants. He says he was acquiring it for his “collection portfolio” – it is not clear to the Panel what he means by this but it would seem to suggest he holds a portfolio of domain names – presumably for resale. The nature of such portfolio is unclear as no further explanation or evidence has been provided, but it follows he purchased the Disputed Domain Name with a view to its resale. The Panel also notes that the Second-Level Domain of the Disputed Domain Name is identical to the Complainants’ trademark, and to other domain names operated by the Complainants (such as The Panel does not consider that it matters that the Respondent has not actually offered the Disputed Domain Name for sale nor used it (assuming his contention that he was nor responsible for its linking to a parking page is correct). The Panel nevertheless considers it more likely than not that the reason the Respondent chose to acquire it for his “portfolio collection” was with a view to resale and that it would likely be of value to the Complainants because it corresponded to their MERCADO LIBRE trademark. That is conduct which falls within Paragraph 4(b)(i) above. Accordingly, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith and the third condition of paragraph 4(a) of the Policy has been fulfilled. 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 Nick J. Gardner
Sole Panelist
Date: August 9, 2021
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