Complainants are Mercado Libre, Inc., Argentina, Mercado Libre, S.R.L., 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., Brazil, and Tech Fund, S.R.L., Uruguay, represented by Marval O’Farrell & Mairal, Argentina (collectively “Complainants”).
Respondent is Agustin Sego, dev, Uruguay. 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 June 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 2, 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 Complainants on June 3, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainants to submit an amendment to the Complaint. Complainants filed an amended Complaint on June 7, 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 Respondent of the Complaint, and the proceedings commenced on June 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 1, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 13, 2021. The Center appointed Richard W. Page as the sole panelist in this matter on August 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 finds that Complainants have a common interest in the MERCADO PAGO Mark, hence a common grievance against Respondent and it is equitable and procedurally efficient to permit the consolidation. The Panel hereby accepts consolidation of these complaints. See section 4.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). 4. Factual Background Complainants are one of the largest e-commerce ecosystem in Latin America, chosen by more than 320 million users to advertise, sell, buy, pay for and send their goods and services over the Internet. As such, Complainant Mercado Libre, Inc. is listed on the NASDAQ stock exchange and, since 2017, is part of the NASDAQ 100 Index. Complainant Mercado Libre, Inc. developed an ecosystem of integrated solutions which expand the ability to buy, sell, pay, deliver items and access credit on the Internet, empowering the entrepreneurial community in Latin America. Mercado Pago, Mercado Shops, Mercado Libre Ads and Mercado Envíos provide a wide range of solutions for e-commerce, payments, credit, and Internet logistics, unheard of in the region, with efficiency and security. In 2017, Complainant Mercado Libre, Inc. incorporated Mercado Crédito to democratize access to credit and enhance financial inclusion. In particular, one of Complainants’ most salient products is Mercado Pago. Currently Mercado Pago is one of the main drivers in Latin America in terms of digital payments, allowing users to process online payments, and send and receive money safely, easily, and quickly. Mercado Pago is available in Argentina, Brazil, Chile, Colombia, Mexico, Peru, Venezuela and Uruguay. Since its introduction in Complainants’ ecosystem, Mercado Pago has processed or 838 million transactions worth USD 28 billion. Complainants’ 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). Complainants’ solutions are also available in Costa Rica, Ecuador, Bolivia, El Salvador, Guatemala, Honduras, Nicaragua, Panama, Paraguay and the Dominican Republic. The Disputed Domain Name was registered on July 1, 2020. The Disputed Domain Name does not resolve to an active website, it resolves to a webpage showing the message “Error 522 – Connection Timed Out”. 5. Parties’ Contentions A. Complainants Complainants contend that the Disputed Domain Name is confusingly similar to the MERCADO PAGO Mark. Worldwide, Complainants have, without limitation, over 125 registered and active trademarks as may be seen from WIPO’s Global Brand Database report. Complainants are the owners of the worldwide famous and well-known MERCADO PAGO Mark. In Argentina, where Complainants’ business started, Complainants are the owners of over 180 registered and active trademarks. These registrations include MERCADO PAGO Reg. No. 3.074.391 in class 9; Registration No. 3.074.392 in class 35; Registration No. 3.704.393 in class 36; Registration No 3.704.394 in class 38 and Registration No. 3.704.395 in class 42. Complainants own registrations, or have requested registrations, for the MERCADO PAGO Mark in other countries in Latin America including: Bolivia (Plurinational State of), Brazil, Chile, Colombia, Mexico, Nicaragua, Paraguay, Peru, Uruguay and Venezuela (Bolivarian Republic of). Complainants contend that the Disputed Domain Name is confusingly similar to the MERCADO PAGO Mark because it includes the entirety of the MERCADO PAGO Mark, without any other distinctive elements. Complainants further contend that the country-code Top-Level Domain (“ccTLD”) “.pw” is not distinctive in determining confusing similarity. Complainants assert that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy. Complainants further assert that Respondent is not licensed or otherwise permitted by Complainants to use the MERCADO PAGO Mark or to apply for use of any domain name incorporating, totally or partially, such trademark. Complainants further assert that Respondent has never been commonly known by the Disputed Domain Name. Complainants further assert that Respondent is passively holding the Disputed Domain Name and therefore not offering any bona fide, legitimate or non-commercial goods or services. Complainants allege that Respondent registered and is using the Disputed Domain Name in bad faith pursuant to paragraph 4(a)(iii) of the Policy. Complainants further allege they have been established in Argentina since 1999 and has been actively using the MERCADO PAGO Mark since 2003, the year in which Complainants introduced the MERCADO PAGO Mark into the Latin American market. Registration of the MERCADO PAGO Mark was made before the Argentine Trademark Office. Complainants further allege that throughout the years as a result of Complainants’ success as Latin America’s largest e-commerce ecosystem, their trademarks, particularly the MERCADO LIBRE Mark and the MERCADO PAGO Mark have become well-known in the region. Complainants further allege that it is almost impossible to believe that Respondent was not aware of Complainants’ MERCADO PAGO Mark when it registered the Disputed Domain Name on July 1, 2020, more than 17 years after Complainants started to use their trademarks. According to the information provided by the Registrar to the Center, Respondent is Uruguayan. Complainants further allege that Respondent knew or should have known of the existence of the MERCADO PAGO Mark, especially considering the high notoriety of the MERCADO LIBRE Mark in Latin America. The webpage to which the Disputed Domain Name resolves shows the message “Error 522 – Connection Timed Out”. Complainants further allege that Respondent’s passive holding of the Disputed Domain Name should be considered in determining Respondent’s bad faith. Complainants further allege that the Panel should also consider the high degree of distinctiveness and reputation of the MERCADO PAGO Mark; the failure of Respondent to submit a response or to provide any evidence of good faith use; Respondent’s attempts to conceal its identity; and the implausibility of any good faith use to which the Disputed Domain Name might be put. B. Respondent Respondent did not reply to Complainants’ contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.” Even though Respondent has failed to file a Response or to contest Complainants’ assertions, the Panel will review the evidence proffered by Complainants to verify that the essential elements of the claims are met. See section 4.3 of the WIPO Overview 3.0. Paragraph 4(a) of the Policy directs that the Complainants must prove each of the following: i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to the MERCADO PAGO Mark which Complainants have rights; and, Section 1.2.1 of the WIPO Overview 3.0 states that registration of a trademark is prima facie evidence of Complainants having enforceable rights in the MERCADO PAGO Mark. Complainants contend that they have numerous registrations of the MERCADO PAGO Mark. Respondent has failed to refute this contention. Therefore, the Panel finds that Complainants have enforceable rights in the MERCADO PAGO Mark for purposes of this proceeding. Section 1.7 of the WIPO Overview 3.0 says that inclusion of the entire trademark in a domain name will be considered confusingly similar. Also, section 1.11.1 of the WIPO Overview 3.0 instructs that gTLDs or ccTLDs such as “.pw” may be disregarded for purposes of assessing confusing similarity. The Panel finds that the entirety of the MERCADO PAGO Mark is contained in the Disputed Domain Name. Respondent has failed to refute this contention. Therefore, the Panel finds that Complainants have satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Complainants assert that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy. Section 2.1 of the WIPO Overview 3.0 states that once Complainants make a prima facie case in respect of the lack of rights or legitimate interests of Respondent, Respondent carries the burden of demonstrating he has rights or legitimate interests in the Disputed Domain Name. Where Respondent fails to do so, Complainants are deemed to have satisfied paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy allows three nonexclusive methods for the Panel to conclude that Respondent has rights or legitimate interests in the Disputed Domain Name: (i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or Complainants further assert that Respondent is not licensed or otherwise permitted by Complainants to use the MERCADO PAGO Mark or to apply for use of any domain name incorporating, totally or partially, such trademark. Complainants further assert that that Respondent has never been commonly known by the Disputed Domain Name. Complainants further assert that Respondent is passively holding the Disputed Domain Name and therefore not offering any bona fide, legitimate or non-commercial goods or services. Respondent has failed to refute these assertions. The Panel finds that Complainants have made a prima facie showing, which has not been refuted by Respondent. Therefore, Complainants have shown the required elements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Complainants contend that Respondent registered and is using the Disputed Domain Name in bad faith in violation of paragraph 4(a)(iii) of the Policy. Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for Complainants to show bad faith registration and use of domain names. Complainants do not rely on paragraph 4(b) of the Policy. Instead, they point out that these criteria are are nonexclusive. See, Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In addition to these criteria, other factors alone or in combination can support a finding of bad faith. See also, WIPO Overview 3.0 section 3.2.1 (listing additional factors); section 3.2.2 (should have known); and section 3.2.3 (willful blindness). Complainants allege they have been established in Argentina since 1999 and have been actively using the MERCADO PAGO Mark since 2003, the year in which Complainants introduced the MERCADO PAGO Mark into the Latin American market. Registration of the MERCADO PAGO Mark was made before the Argentine Trademark Office. Complainants further allege that throughout the years as a result of Complainants’ success as Latin America’s largest e-commerce ecosystem, their trademarks, particularly the MERCADO LIBRE Mark and the MERCADO PAGO Mark have become well-known in the region. Especially to Respondent, who lives in neighboring Uruguay. Complainants further allege that it is almost impossible to believe that Respondent was not aware of Complainants’ MERCADO PAGO Mark when it registered the Disputed Domain Name on July 1, 2020, more than 17 years after Complainants started to use their trademarks. Complainants further allege that Respondent knew or should have known of the existence of the MERCADO PAGO Mark, especially considering the high notoriety of the MERCADO LIBRE Mark in Latin America. The webpage to which the Disputed Domain Name resolves shows the message “Error 522 – Connection Timed Out”. Complainants further allege that Respondent’s passive holding of the Disputed Domain Name should be considered in determining Respondent’s bad faith. Complainants further allege that the Panel should also consider the reputation of the MERCADO PAGO Mark; the failure of Respondent to submit a response or to provide any evidence of good faith use; Respondent’s attempts to conceal its identity; and the implausibility of any good faith use to which the Disputed Domain Name might be put. The Panel finds that Complainants have set forth sufficient actions by Respondent to comply with the requirements of paragraph 4(a)(iii) 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 Richard W. Page
ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and,
iii) that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the MERCADO PAGO Mark.
Sole Panelist
Date: August 27, 2021
Full & Egal Universal Law Academy