Complainant is Condominio Residencias Molino de Agua P. en C., Mexico, represented by Hillmar, Mexico.
Respondent is Whois Privacy Protection Service, Inc., United States of America (“United States”) / Tom Egan, WOComm, United States, represented by Lex Informática Abogados, Mexico.
2. The Domain Names and RegistrarThe disputed domain names
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 17, 2021. On August 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 23, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On August 25, 2021, the Center sent, in English and in Spanish, a Language of the Proceedings communication to the Parties stating the Language of the Registration Agreement to be in English. On August 27, 2021, Complainant requested the Language of the Proceedings to be Spanish. On August 28, 2021, Respondent objected to this. On September 4, 2021, Complainant submitted a Complaint translated into English but still requested the Language of the Proceedings to be Spanish.
The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on September 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 30, 2021. The Response was filed with the Center on September 30, 2021.
The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on October 6, 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 BackgroundComplainant is the condominium regime or homeowners association for a building complex located in Puerto Vallarta, Mexico, named “Condominio Residencias Molino de Agua”, which was established on February 19, 2009. Complainant’s building complex is located at the Puerto Vallarta’s beach, offering residential and vacation apartments. Various touristic portals over the Internet offer condominiums in this building complex. The Panel under its general powers articulated, inter alia, in paragraph 10 of the Rules, has conducted various searches over the Internet regarding “Condominio Residencias Molino de Agua”.
Complainant has registered various trademarks comprising the names “Condominio Residencias Molino de Agua” or “Residencias Molino de Agua”, namely:
Mexican Trademark Registration No. 2232286, CONDOMINIO RESIDENCIAS MOLINO DE AGUA, word, registered on April 15, 2021, in class 35;
Mexican Trademark Registration No. 2232257, CONDOMINIO RESIDENCIAS MOLINO DE AGUA, word, registered on April 15, 2021, in class 43;
Mexican Trademark Registration No. 2184738, RESIDENCIAS MOLINO DE AGUA, figurative, registered on December 9, 2020, in class 35; and
Mexican Trademark Registration No. 2131654, RESIDENCIAS MOLINO DE AGUA, figurative, registered on September 9, 2020, in class 43, (collectively the “CONDOMINIO RESIDENCIAS MOLINO DE AGUA marks”).
The disputed domain name
“We are not associated with the Molino de Agua Homeowners Association or the Molino de Agua Condominium Administration as by Mexican law they are not allowed to be involved in or to manage rentals. We solely represent the various owners of the condominiums.
If you are a homeowner at Molino de Agua Private Residences, and you are looking for the homeowners association, please feel free to contact them through their website: molinodeagua.net. We do not represent in anyway the homeowners association, and we do not have any relationship with any trademark that may be related to this properties.”
The disputed domain name
Key contentions of the Complaint may be summarized as follows:
The disputed domain names are confusingly similar to Complainant’s trademarks. The Disputed domain names are phonetically and semantically similar to Complainant’s trademarks, using the English translation of the term “condominio” (“condominium”) with the same understandable meaning.
Respondent has no rights or legitimate interests in respect of the disputed domain names. The name “Condominio Residencias Molino de Agua” is used by Complainant for daily operation of its activities as a condominium regime duly constituted under this name (since 2009). It is illegitimate that Respondent uses this name in the disputed domain names deceiving the public.
The disputed domain names were registered and are being used in bad faith. Respondent registered and used the disputed domain names with full knowledge of the existence of Complainant’s brands, as corroborates the correspondence between the Parties. Respondent’s use of the disputed domain names deceives the public as the similar name “Condominio Residencias Molino de Agua” corresponds to Complainant. Further evidence of Respondent’s bad faith is the use in the website linked to the disputed domain names of an address located at Complainant’s condominium building complex. Complainant provides various emails between the representatives of the Parties regarding a negotiation to conclude a transaction agreement, as well as a copy of a transaction agreement draft between the Parties.
Complainant has cited various decisions under the Policy that it considers supportive of its position, and requests the transfer of the disputed domain names.
B. RespondentKey contentions of the Response may be summarized as follows:
The Complaint is not signed and no power of attorney has been provided as evidence of proper representation of Complainant. Complainant is a condominium administrator, not a company or commercial entity, not being legitimated to conduct any trade, and only the general condominium assembly, which is the highest government body of the condominium, would have been able to authorize the registration of any trademark under the Civil Code of the State of Jalisco. However, there is no evidence that the general condominium assembly approved the filing of Complainant’s trademarks, and domain names cannot be “common goods” of a condominium residence, because they are not “individual property rights”, but “human-friendly forms of Internet addresses”.
The disputed domain names are not identical or confusingly similar to Complainant’s trademarks, because they fail to incorporate, in their entirety, these marks. The disputed domain names are different from Complainant’s trademarks in appearance, sound and overall impression. Furthermore, trademarks must be used in commerce (the Mexican Federal Law on the Protection of Industrial Property requires that a trademark must be used “in the industry, in commerce or in the services they provide”); however, a homeowners association cannot sell anything and cannot provide services.
Complainant has not supported its allegations that Respondent has no rights or legitimate interests in respect of the domain names with any evidence. Before any notice of the dispute, Respondent used the disputed domain names in connection with a bona fide offering of goods or services in a project for decentralizing rental of properties, giving owners the control of reservations, through a platform that was launched on April 3, 2008. Since 2008, Respondent is known by the disputed domain names, and uses the disputed domain names without intent to misleadingly divert consumers for commercial gain or to tarnish Complainant’s trademarks. Respondent has operated its business with no problem until January 2021 (when Complainant start using the term “condominium”). It is a common practice to offer condominiums or apartments for vacation rental in platforms like Booking or Airbnb, or in specialized websites oftentimes dedicated to a particular property, as the one linked to the disputed domain names. Some examples of websites that are using the terms “Molino de Agua” in their domain names to advertise condominiums for rent are provided. Respondent’s website contains a disclaimer sufficiently clear and prominent regarding the absence of relationship or endorsement of this site by Complainant, which is visible in all pages of the site, and the “about” section clarifies the services provided by Respondent. All requirements indicated in the Oki Data bona fide test are fulfilled.1 The Policy was designed to prevent cybersquatting, not being applicable for all disputes involving domain names.
The disputed domain names were not registered and are not being used in bad faith. Complainant’s allegations are false and unfunded. The disputed domain names were registered in 2008 and 2019, while the Complainant’s trademarks were applied in 2020 and 2021, and these trademarks do not correspond to the brand used at the main entrance of Complainant’s condominium (“Molino de Agua Private Residences – Residencias Privadas”). Respondent has never offered to sell the disputed domain names to Complainant, nor to anyone. Since January of 2021, Complainant has been harassing, extorting and threatening Respondent to surrender the disputed domain names, threatening Respondent with bad publicity among the owners of the condominium, and has offered MXN 25,000 to Respondent for buying a new domain name and for building a new website. Respondent also received a threat disguised as a “friendly advice” via Facebook Messenger. The Parties are not competitors and the disputed domain names were registered in good faith in connection to a legitimate business. The presence in Respondent’s website of a clear and sufficiently prominent disclaimer supports its good faith. Respondent was not aware of the existence of any trademark until Complainant started to harass, extort and threat Respondent, and, as an act of good faith, Respondent took measures to avoid any kind of confusion (by introducing a disclaimer).
Complainant seems to want to hijack the disputed domain names, abusing of this proceeding in an attempt of Reverse Domain Name Hijacking. Complainant knew it could not succeed as to any of the required three elements of the Policy, because the Disputed Domain Name No. 1 has been in commerce since 2008 and Complainant’s trademarks were registered after the registration of the disputed domain names. Complainant has not provided any supporting evidence and has not quoted any precedents. Complainant provided false or incomplete evidences (not providing some of the correspondence between the Parties) and tried to mislead the Panel in presenting its trademarks (writing part of the terms included in its trademarks in English, although these trademarks are entirely in Spanish). Additionally, one extract related to Complainant’s trademarks indicates a wrong filing date (“19/FEB/2009” instead of its real filing date “26/ENERO/2021”), and Complainant declared to the Mexican Institute of Industrial Property (“IMPI”) as dates of first use of its trademarks 2009 and 2012. Complainant claims that it has been using its trademarks to provide various services since 2009 and 2012, but it is not an entity doing any type of business (as recognizes its legal counsel in one letter addressed to Respondent), which is a cause for cancellation under the Mexican Federal Law on the Protection of Industrial Property. Complainant has obtained four trademarks by declaring false information to the IMPI.
Respondent has cited various decisions under the Policy that it considers supportive of its position, and requests the Panel to deny relief to the Complainant.
6. Discussion and FindingsThe Complainants have made the relevant assertions as required by the Policy and the dispute is properly within the scope of the Policy. The Panel has authority to decide the case examining the three elements in paragraph 4(a) of the Policy,2 taking into consideration all of the relevant evidence, annexed material and allegations, and performing some limited independent research under the general powers of the Panel articulated, inter alia, in paragraph 10 of the Rules.
The Panel notes that Complainant duly signed the Complaint (albeit its translation was not singed), and that all necessary formalities under the Policy has been observed by the Parties.
A. Language of the ProceedingPursuant to Rules, paragraph 11, in the absence of an agreement between 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.
The Complaint was submitted in Spanish, requesting Spanish to be the language of the proceeding, indicating that the Parties were located in Mexico, which is a Spanish-speaking country, and had corresponded in Spanish prior to the Complaint. Subsequently, Complainant submitted a translation of the Complaint and all annexed materials into English.
Respondent requested English to be the language of this proceeding, as it is the language of the registration agreement of the disputed domain names, and Respondent is not located in Mexico but in California, United States, feeling more confident in expressing himself in English. Respondent indicates that he has a representative in Mexico that has maintained correspondence with Complainant in Spanish language, but he never corresponded with Complainant in this language.
The Panel notes that the website linked to the disputed domain names is in English language and that, according to the evidence provided by Complainant, the transaction agreement draft negotiated by the Parties was bilingual English/Spanish.
Due to all these circumstances, the Panel considers more appropriate for English to be the language of the proceeding and to render this decision in English.
B. Identical or Confusingly SimilarComplainant has rights in the CONDOMINIO RESIDENCIAS MOLINO DE AGUA marks by virtue of its trademark registrations in Mexico. These registrations prima facie satisfy the threshold requirement of having trademark rights for the purposes of standing to file a UDRP case. See section 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”).
The Panel notes that Complainant’s trademark registrations over the CONDOMINIO RESIDENCIAS MOLINO DE AGUA marks postdate the registration of the disputed domain names. The fact that the disputed domain names were registered before Complainant acquired registered trademark rights in the terms “condominio residencias molino de agua” or “residencias molino de agua” does not by itself preclude Complainant’s standing to file a UDRP case, nor a finding of identity or confusing similarity under the first element, albeit, only in exceptional circumstances, would Complainant be able to prove Respondent’s bad faith. See section 1.1.3, WIPO Overview 3.0.
The Panel further notes that Complainant has provided evidence of being established since February 19, 2009 identified by the name “Condominio Residencias Molino de Agua”, operating a homeowners association since that date under this name, and Respondent has indicated that Complainant’s building complex has used during all these years in its main door the name “Molino de Agua, Private Residences Residencias Privadas”. The Panel finds that a homeowners association may provide administration services as well as any other service requested and authorized by its members (the owners of its various condominiums). The Panel therefore considers that Complainant holds rights in relation to unregistered CONDOMINIO RESIDENCIAS MOLINO DE AGUA, and MOLINO DE AGUA PRIVATE RESIDENCES RESIDENCIAS PRIVADAS marks for the purposes of the Policy. It is to be noted that the term “trademark or service mark” as used in paragraph 4(a)(i) of the Policy encompasses both registered and unregistered marks. See sections 1.1.1 and 1.3, WIPO Overview 3.0.
In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered identical or confusingly similar to that mark for purposes of the Policy. Furthermore, the applicable generic Top-Level-Domain (“gTLD”) in a domain name is considered a standard technical registration requirement and, as such, is generally disregarded under the first element confusing similarity test. See sections 1.7, and 1.11, WIPO Overview 3.0.
The disputed domain names incorporate the terms “molino de agua” followed by the geographical term “Vallarta” or the term “condominiums” respectively, and the gTLD “.com” is a technical requirement, generally disregarded for the purpose of the analysis of the confusing similarity. The Panel finds that Complainant’s trademarks are recognizable in the disputed domain names.
Accordingly, the Panel finds that the disputed domain names are confusingly similar to Complainant’s trademarks, and the first element of the Policy under paragraph 4(a)(i) has been satisfied.
C. Rights or Legitimate InterestsAlthough Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, prior UDRP panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of Respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden production of rights or legitimate interests in the disputed domain names to Respondent, once Complainant has made a prima facie showing indicating the absence of such rights or legitimate interests.
Complainant has alleged Respondent has no authorization to use Complainant’s trademarks, and Respondent’s use of Complainant’s trademarks in the disputed domain names deceives the public. This effectively shifts the burden to the Respondent of producing rights or legitimate interests in the disputed domain names.
Paragraph 4(c) of the Policy provides the circumstances, without limitation, for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in the disputed domain name.
Respondent alleges that before any notice of the dispute, it has used of the disputed domain names in connection with a legitimate business of vacation rentals only related to condominiums located in Complainant’s building complex, complying with all bona fide requirements indicated in the Oki Data Americas, Inc. v. ASD, supra. Respondent further indicates that its website includes a sufficiently clear and prominent disclaimer, regarding the absence of relationship or endorsement of this site with Complainant.
The Panel notes that Respondent does not indicate when the abovementioned disclaimer was included in its website. Under its general powers articulated, inter alia, in paragraph 10 of the Rules, the Panel has consulted the Internet archive WayBackMachine in connection to the Disputed Domain No. 1, noting no disclaimer in Respondent’s website in all the stored captures related to its website (“www.molinodeaguavallarta.com”). The last of these captures is dated March 1, 2021 (four months before the dated of the Complaint). Therefore, the said disclaimer has presumably been included in Respondent’s website after at some point after March 1, 2021 and before the Complaint’s date (July 28, 2021).
The Panel further notes that the Respondent’s website includes information and offers related not only to various vacation rentals offers related to condominiums located at Complainant’s building complex, but also various links to other local businesses, including a link to a website that offers vacation rentals in different villas located in the same area (Puerto Vallarta, Mexico), namely “www.vallartashores.com”. The Panel has corroborated through the above-mentioned check in WayBackMachine that these links to various business non-related to Complainant’s building complex (including links to third parties real state agencies or platforms) have been included in Respondent’s website since at least the first capture stored by WayBackMachine for this site dated April 3, 2008.
The Panel further notes that Disputed Domain Name No. 2 does not resolve to an active website, being redirected to Respondent’s website at Disputed Domain Name No. 1 “www.molinodeaguavallarta.com”.
Additionally, the Panel finds that a disclaimer included in the footer of a long website with many photographs of the different offers of condominiums for rent like Respondent’s website, may not be sufficiently prominent and may go unnoticed to Internet users. It is more likely than not that Internet users would only arrive to the disclaimer included in the very last part of Respondent’s website footer, after having selected and booked any of the offered vacation rentals.
It is further to be noted that a core factor in assessing fair use of the disputed domain name is that it does not falsely suggest affiliation with the Complainant’s trademark. The disputed domain names incorporate the terms “molino de agua” adding a geographical term (“Vallarta”) that refers to the location of Complainant’s condominium complex, or a term (“condominiums”) that directly refers to Complainant’s condominium complex or Complainant’s itself and its unregistered marks. Therefore, the Panel considers that there may exists a risk of implied affiliation, particularly regarding the Disputed Domain Name No. 2
All the above-mentioned circumstances lead the Panel to conclude that Respondent has not rebutted Complainant’s prima facie case. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established.
D. Registered and Used in Bad FaithThe Policy, paragraph 4(a)(iii), requires that the Complainant establish that the disputed domain names have been registered and are being used in bad faith.
The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”, being the Panel prepared to draw certain inferences in light of the particular facts and circumstances of the case. See section 4.2, WIPO Overview 3.0.
The Panel notes that the disputed domain names were registered before the Complainant’s registered rights, but Complainant has used the unregistered CONDOMINIO RESIDENCIAS MOLINO DE AGUA and MOLINO DE AGUA PRIVATE RESIDENCES RESIDENCIAS PRIVADAS marks since February 19, 2009.
In this respect, the Panel notes that the Disputed Domain Name No. 1 was registered about one year before the first use of Complainant’s unregistered rights (i.e. on March 29, 2008), and Complainant has not provided any evidence related to the alleged Respondent’s bad faith at the time of registration of the Disputed Domain Name No.1.
The content of the fist capture of Respondent’s website obtained from WayBackMachine (dated April 3, 2008) indicates that Respondent knew about Complainant’s building complex, promoting this building complex and various vacation rental offers in condominiums located in this complex. This capture indicates in its landing page that “Residencias Molino de Agua is an exciting new beach front community located in the heart of Puerto Vallarta’s Romantic Zone”, and is dated only a few days after the registration of Disputed Domain Name No. 1 (on April 3, 2008).
In this regard, the Panel finds that nothing in this case suggests that Respondent may had the intention to target Complainant (which seems to have started its activity on February 20, 2009, in accordance with the tax information provided in the Annex 3 to the Complaint), when it registered the Disputed Domain Name No. 1.
In 2008, there is no evidence in the file that may suggest that CONDOMINIO RESIDENCIAS MOLINO DE AGUA marks were known among the public (despite the likely existence of the complex of residences). On the contrary, nothing in the file suggests that these marks were even used in a trademark sense, when Respondent registered and started using the Disputed Domain Name No. 1.
While it seems that the condominium complex “Residencias Molino de Agua”, in Vallarta, existed at the time of the registration of the Disputed Domain Name No. 1, and Respondent was likely aware of it, that is not sufficient to conclude that Respondent registered the Disputed Domain Name No. 1 to take advantage of Complainant or its trademark rights.
Accordingly, the Panel concludes that Complainant has not met its burden of establishing that the Disputed Domain Name No. 1. has been registered in bad faith.
Regarding the Disputed Domain Name No. 2, the Panel notes that the circumstances are quite different. The Disputed Domain Name No. 2 was registered in 2019, after Complainant acquired through use its unregistered rights, and when Complainant’s condominium complex and homeowners association had already notable presence over the Internet, being notorious in the touristic sector (the fact that the first of Complainant’s registered trademarks including the term “condominio” was registered in 2021 does not alter this conclusion). Respondent has provided up to ten different websites related to vacation rentals of condominiums located in Complainant’s condominium complex. The Panel has further corroborated, under its general powers articulated, inter alia, in paragraph 10 of the Rules that Complainant’s complex is offered in main touristic platforms like Booking or Trivago, existing quite a high number of other websites offering vacation rentals related to this condominium complex.
The Panel further notes the Disputed Domain Name No. 2 shows a higher similarity with Complainant and its trademarks, considering that the word “condominiums” added to the terms “molino de agua” may generate a clear likelihood of association with the Complainant and its CONDOMINIO RESIDENCIAS MOLINO DE AGUA marks.
It is further remarkable that the Disputed Domain Name No. 2 does not resolve to an active website, but redirected to Respondent’s website at the Disputed Domain Name No. 1.
In light of the above, taking into consideration all cumulative circumstances of this case, on the balance of probabilities, the Panel finds that the Disputed Domain Name No. 2 was registered and is being used targeting Complainant and its trademarks, with the intention of free riding on their established reputation to increase the traffic of Respondent’s website for a commercial gain by generating an affiliation or association to Complainant and its trademarks.
Accordingly, the Panel concludes that Complainant has met its burden of establishing that the Disputed Domain Name No. 2 has been registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy.
E. Reverse Domain Name Hijacking (“RDNH”)Paragraph 1 of the Rules states: “Reverse Domain Name Hijacking means using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”
Paragraph 15(e) of the Rules states in part: “If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
The Panel finds that Complainant’s conduct throughout its quest for the disputed domain names is not uncommon. Complainant evidently and understandably wanted to avoid the use by Respondent of the disputed domain names, considering them confusingly similar to its trademarks, sent various cease and desist communications to Respondent, offered a financial compensation for the inconvenience this may cause to Respondent, and, according to the evidence provided by Complainant, tried to negotiate an amicable solution to the conflict before filing the Complaint.
The circumstance of being the disputed domain names registered before Complainant’s trademarks is perfectly admissible under the Policy, particularly noting that the condominium complex “Residencias Molino de Agua”, in Vallarta, existed at the time of the registration of the Disputed Domain Name No. 1. The error in an extract of Complainant’s trademark registrations does not justify, in the Panels view, the allegation of Complainant’s attempt of RDNH, as it may be caused by a simple error. Likewise, the fact that some of the terms included in Complainant’s trademarks were translated into English, is not sufficient to consider that the Complaint was brought abusively, as this discrepancy appears to have been caused by as simple translation error. The Panel notes that Complainant’s trademarks were correctly indicated (with all its terms in Spanish language) in the Complaint originally filed (in Spanish language).
Other Respondent’s allegations related to the invalidity of Complainant’s trademark registrations exceed the relatively limited scope of this administrative proceeding, and would be more appropriately addressed by a court of competent jurisdiction available to Respondent.
7. DecisionFor 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
Reyes Campello Estebaranz
Sole Panelist
Date: October 20, 2021
1 See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903.
2 Paragraph 4(a) of the Policy lists the three elements, which a complainant must satisfy in order to divest a respondent of a domain name: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith.