ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Grupo Rotoplas, S.A.B. de C.V. v. Tamara Bernanrdo, Companyanombres Case No. D2023-3618 1. The Parties The Complainant is Grupo Rotoplas, S.A.B. de C.V., Mexico, represented by Hurrle Abogados, Mexico. The Respondent is Tamara Bernanrdo, Companyanombres, Mexico. 2. The Domain Name and Registrar The disputed domain name is registered with 1API GmbH (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 29, 2023. On August 29, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 30, 2023, 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 (C/O WHOISTRUSTEE.COM LIMITED REGISTRANT OF ROTOPLAS-LIQUIDACIONES.COM) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 4, 2023, 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 September 5, 2023. 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 September 8, 2023. In accordance with the Rules, paragraph 5, the due date for Response was September 28, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 10, 2023. page 2 The Center appointed Luis C. Schmidt as the sole panelist in this matter on October 24, 2023. 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 in this proceeding is Grupo Rotoplas, S.A.B. de C.V. a legally established company created in accordance with the laws of Mexico. The Complainant is dedicated to creating solutions for storing, conveying, purifying, and treating water. A significant portion of its activity involves the production and distribution of water tanks and water reservoirs commonly known as "tinacos" in Mexico, as well as spare parts of them. The Complainant is a Mexican multinational public company headquartered in Mexico City, Mexico, having a presence in 13 Latin American countries and the United States of America. The Complainant is the owner of the following trademark registrations granted by the Mexican Institute of Industrial Property ("IMPI"): - Trademark registration number 640070 for the ROTOPLAS word mark in class 20, registered on January 31, 2000; - Trademark registration number 762776 for the ROTOPLAS word mark in class 6, registered on September 27, 2002; - Trademark registration number 987561 for the ROTOPLAS design mark in class 6, registered on May 31, 2007 - Trademark registration number 988272 for the ROTOPLAS design mark in class 20, registered on June 19, 2007. - Trademark registration number 991776 for the ROTOPLAS design mark in class 11, registered on July 9, 2007. On February 10, 2023, the IMPI issued a declaration of fame for the trademark ROTOPLAS on the file identified with the number M.F.275/2022(G-7)15876. The disputed domain name was registered on June 1, 2023. The website at the disputed domain name does not display any information. 5. Parties' Contentions A. Complainant i. The disputed domain name is confusingly similar to the trademarks owned by the Complainant, as the term "rotoplas" is fully included in the disputed domain name, reproducing the trademarks owned by the Complainant. ii. The disputed domain name is confusingly similar to the ROTOPLAS trademark due to the fact that the term ROTOPLAS is completely included in the disputed domain name, and the term "liquidaciones" does not add any distinctive element that might avoid this confusion. page 3 iii. The term "liquidaciones" makes the potential customers think that they can purchase products from ROTOPLAS below their average price due to the "liquidaciones", as its translation to English is "sale offer", used to advertise the sale of products below their average price. iv. The Mexican Institute of Industrial Property (IMPI) issued the office action number M.F.275/2022(G7)15876 in February 2023, stating that ROTOPLAS is considered as a FAMOUS TRADEMARK according with the Mexican Law. v. The word "liquidaciones" is not a distinctive element that can be used to differentiate a brand, especially when ROTOPLAS has, its primary and original business source in Mexico where the official language is Spanish. vi. Grupo Rotoplas, S.A.B. de C.V. has prior rights over the denomination ROTOPLAS, at least since August 11, 1996, as indicated by the filing date in the Mexican Trademark Registration Certificate number 640070. vii. The disputed domain name has been used for the fake sale of solutions for storing, conducting, purifying, and treating water, which are directly related to the ROTOPLAS brands. viii. The Respondent has no rights or legitimate interests in relation to the disputed domain name as he is not a licensee or an authorized distributor of the goods or services of ROTOPLAS. ix. The disputed domain name has been used solely for speculative purposes and to the detriment of ROTOPLAS trademark. x. The Respondent is not commonly known by the name or trademark ROTOPLAS. xi. The Respondent has no relationship or authorization from the Complainant to use their trademarks as "rotoplas-liquidaciones.com" is not listed as a licensee or authorized distributor of any Grupo Rotoplas, S.A.B. de C.V. trademarks. xii. The Respondent did not have any prior rights or legitimate interests in the disputed domain name, and they are not commonly known by the disputed domain name. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar In accordance with the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7, the examination under the first requirement of the Policy involves a reasoned but relatively straightforward comparison to assess whether the trademark is recognizable within the disputed domain name. The Panel immediately recognizes the ROTOPLAS trademark owned by the Complainant within the disputed domain name, even though the latter includes the term "liquidaciones", which does not prevent a finding of confusing similarity for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview 3.0 section 1.8 ("Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element"). page 4 The term "liquidaciones" does not avoid a finding of confusingly similarity between the disputed domain name and the Complainant's trademark. See Grupo Rotoplas, S.A.B. DE C.V. v. Lucrecia Gomez Gomez, WIPO Case No. D2019-1919. The ".com" suffix is typically disregarded for the purposes of this confusingly similarity analysis. See WIPO Overview 3.0, section 1.11.1 where it is noted that generic Top-Level Domains ("gTLDs") are standard registration requirements and therefore should not be typically taken into account to determine whether or not the disputed domain name is confusingly similar to the relevant trademark. From the above, it is necessary to conclude that the disputed domain name is confusingly similar to the ROTOPLAS trademarks owned by the Complainant. Under these conditions, the Panel considers the first requirement of paragraph 4(a) of the Policy of the Policy satisfied. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy expressly and non-exhaustively recognizes the following defenses to establish rights or legitimate interests in a disputed domain name: "i) before any notice to you of the dispute, your 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) you (as an individual, company, or other organization) have been commonly known by the domain name, even if you have not acquired product or service trademarks; or iii) you are 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 or service mark at issue." In the absence of a response to the Complaint, the Panel is prepared to infer that the Respondent lacks rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse, WIPO Case No. D2000-1221 (holding that the respondent's failure to respond to the complaint may be interpreted as an admission on its part of its lack of legitimate interest in the disputed name domain). In any case, it is up to the Complainant to prove prima facie that the Respondent lacks rights or legitimate interests in the disputed domain name, for which the Complainant's allegations that are credible and reasonable to the Panel must be taken into account, as well as the evidence presented. WIPO Overview 3.0, section 2.1. The Complainant alleges that the Respondent does not have any trademark registration of its own for the term "rotoplas" nor is it a licensee of the Complainant's ROTOPLAS trademark. Likewise, the Complainant demonstrates with printouts of the Respondent's website associated with the disputed domain name, that the website is not active. This use, in the opinion of the Expert, cannot be considered as a legitimate, fair, noncommercial, or good faith use in accordance with the Policy, given that it was aimed at misleading or confusing by the association between the disputed domain name and the trademarks of the Complainant. The addition of the term "liquidaciones" further supports the Respondent's lack of rights or legitimate interests in the disputed domain name as it suggests a sponsorship or endorsement of the disputed domain name with the Complainant. WIPO Overview 3.0, section 2.5.1. page 5 Therefore, there is no evidence that the Respondent has used, or made demonstrable preparations to use, the disputed domain name in connection with a good faith offer of products or services. Under these conditions, the Panel considers the requirement of paragraph 4(a)(ii) of the Policy satisfied. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy imposes on the Complainant the double requirement of proving that the disputed domain name was registered and used in bad faith. For its part, paragraph 4(b) of the Policy provides, as an example, the following scenarios of bad faith in the registration and use of a domain name: "i) Circumstances indicating that you have 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 product or service trademark 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 trademark from reflecting the mark on 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 website 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." Regarding the registration, the Panel takes into account, on the one hand, the complete reproduction of the Complainant's prior trademark in the disputed domain name and, on the other hand, the notoriety of the ROTOPLAS trademark in Mexico, where both the Complainant and the Respondent are located. Under these circumstances, it is reasonable, on the balance of probabilities, to conclude that the Respondent knew or should have known the Complainant's trademark at the time of registration of the disputed domain name. WIPO overview 3.0, section 3.2.2. It is precisely this prior knowledge that is the circumstance that the Panel assesses to consider that the registration was in bad faith, with the disputed domain name having been registered due to its confusing similarity with the ROTOPLAS trademark. In this order of ideas, the Panel considers that the registration and use of the disputed domain name was in bad faith since the Respondent misappropriated a domain name that widely reproduces the well-known trademark ROTOPLAS to impersonate the Complainant. This becomes even more evident through the inclusion of the term "liquidaciones" among with the ROTOPLAS trademark which indicates the Respondent's intention to pass off as the Complainant. The disputed domain name does not resolve to an active webpage. Panels have found that the non-use of a domain name (including a blank or "coming soon" page) would not prevent a finding of bad faith under the doctrine of passive holding. Having reviewed the record, the Panel notes the distinctiveness and reputation of the Complainant's trademark and finds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy. Based on this, the Panel determines that the disputed domain name was registered and used in bad faith. Under these conditions, the Panel considers the requirement of paragraph 4(a)(iii) of the Policy satisfied. page 6 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 be transferred to the Complainant. /Luis C. Schmidt/ Luis C. Schmidt Sole Panelist Date: November 13, 2023
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