WIPO Domain Name Dispute: Case No. D2004-0242
WIPO Domain Name Dispute: Case No. D2004-0242
Description:
WIPO Arbitration
and Mediation Center
ADMINISTRATIVE
PANEL DECISION
Consejo de
Promoción TurÃstica de México, S.A. de C.V. v.
Latin America Telecom Inc.
Case No.
D2004-0242
1.The Parties
The Complainant is Consejo
de Promoción TurÃstica de México, S.A. de C.V., Colonia Anzures,
Mexico, represented by Bello, Guzmán, Morales Y Tsuru, S.C., Mexico.
The Respondent is Latin
America Telecom Inc., Pittsburgh, PA Pennsylvania, UnitedStates of America,
represented by ESQwire.com Law Firm, United States of America.
2.The Domain Name and Registrar
The disputed domain name
<mexico.com> is registered with Register.com.
3.Procedural History
The Complaint was filed
in the Spanish language with the WIPO Arbitration and Mediation Center
(the âCenterâ) on March 30, 2004. On April 6, 2004, the Center
transmitted by email to Register.com a request for registrar verification
in connection with the disputed domain name. On April 6, 2004,
Register.com transmitted by email to the Center its verification response
confirming that the Respondent is listed as the registrant; providing
the contact details for the administrative, billing, and technical contact
and stating that the language used at the time of registration was English.
The Center verified that the Complaint satisfied the formal requirements
of the Uniform Domain Name Dispute Resolution Policy (the âPolicyâ),
the Rules for Uniform Domain Name Dispute Resolution Policy (the âRulesâ),
and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution
Policy (the âSupplemental Rulesâ).
In accordance with the
Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent
of the Complaint and the proceedings commenced on April 6, 2004.
In response to objections from the Respondent regarding the language
of the proceedings, the Center asked the Complainant to translate the
Complaint into English. An English language Complaint was filed with
the Center on April 30, 2004, and the Center extended the due date for
the Response to May 20, 2004. The Response was filed in the English
language with the Center on May 21, 2004.
The Center appointed Alan
L. Limbury, Manuel Moreno-Torres and David E. Sorkin as panelists in
this matter on June 21, 2004. The Panel finds that it was properly
constituted. Each member of 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.
Language of the proceeding
The Panel has considered
Complainantâs submission that that this proceeding should be conducted
in Spanish, based on its own character as a majority Government-owned
company incorporated and domiciled in Mexico; upon connections between
Respondent and Mexico; upon familiarity on the part of the CEO of Respondent,
Mr.Rami Schwartz, with the Spanish language; upon considerations of
expense and delay and upon a concern that the translation of its evidence
into English might inequitably disadvantage Complainant.
Pursuant to the Rules,
paragraph 11(a), the language of the administrative proceeding shall
be the language of the registration agreement unless otherwise agreed
by the parties, specified in the registration agreement or determined
by the Panel. The parties have not made any such agreement. The registrar
is a New York company, the language of the registration agreement is
English and no other language is specified in that agreement.
Respondent is a United States company incorporated in Delaware and having
an address in Mexico. Mr. Schwartz does appear to be fluent in Spanish.
Respondent is represented by an American attorney and the Response is
in English.
The Complainant has complied
with the Centerâs request to translate the Complaint into (well expressed)
English. Some of the Exhibits remain in Spanish. Although there has
already been delay in the proceeding and additional cost incurred by
Complainant in translating the Complaint, there would be additional
delay and cost incurred if Respondent were now required to translate
its Response into Spanish. In all the circumstances the Panel is not
disposed to determine that the language of the proceeding should be
other than English.
Accordingly the language
of the proceeding is English.
Extension of time for
decision
On July 6, 2004, in accordance
with the Rules paragraph 10(c), the date by which the Panel is required
to forward its decision to the Center was extended to July 19, 2004.
On July 19, 2004, the date was further extended by the Panel to July
24, 2004. In the event the further extension was not needed.
4.Factual Background (chronological)
The disputed domain name
<mexico.com> was registered on November 14, 1997. The registrant
was recorded as âLatin America Telecom Inc. Rami Schwartzâ.
Mr.Schwartz is the CEO of Latin America Telecom Inc. and principal contact
for domain name purposes. The Panel will refer to the registrant collectively
as Respondent.
The website to which the
disputed domain resolves contains information relating to Mexico and
has a portion comprising advertisements for tourism services, such as
hotels, transportation, restaurants and entertainment.
Complainant, the Mexico
Tourism Board, commenced operations in October 1999. It is an incorporated
company, majority owned by the Government of Mexico. Its main function
is to plan and coordinate, in conjunction with the Tourism Ministry
of Mexico, the policy and strategy for promoting, both nationally and
internationally, the tourism of Mexico. Many of its activities had been
conducted over the previous three decades by its predecessor, the Tourism
Ministry. Complainant is authorized by the Ministry of Foreign Affairs
to operate offices in many major cities of the world, including five
in the United States of America.
On March 26, 2001, Complainantâs
representative submitted to the United States Patent and Trademark Office
(about the Respondentâs website) that:
âThe website
for MEXICO.COM is a general information site about Mexico, and includes
information such as employment in Mexico, classified advertisements,
horoscopes, current news events, financial and stock quotes, and product
information and sale of a variety of items including books, cdâs,
computers, electronics and groceries.â
On June 19, 2001, Complainant
became non-exclusive licensee from the Ministry of Tourism of Mexican
registered trademark 604142, âMEXICO and designâ, registered in
class 35 on March 29, 1999, upon application made on November 19, 1998.
The licence provides that Complainant is entitled to exercise legal
actions to protect the trademark as if it were the holder. The dominant
feature of this mark is the capitalized word MEXICO.
In late 2002 or early 2003,
there was a meeting between the parties, as to which there is conflicting
evidence before the Panel. It is convenient to set out here the partiesâ
respective versions of what occurred, so that the meeting may be appreciated
in its chronological setting.
Complainant relies on a
notarized statement under oath by Mr. Gabriel Moctezuma Muñoz, Complainantâs
Assistant Managing Director and Legal Representative.
Mr. Muñoz says that at
the end of 2002 (without recalling the exact date), he attended a meeting
with Mr. Rami Schwartz and others at Complainantâs offices, at which
âthe only subject discussed⦠was the sale offer made by⦠Mr. Schwartz
regarding the domain name <mexico.com> to [Complainant] stating
that he was the owner thereof and stating that its price was [US $1.2
million], subject to negotiation and the prior agreement of his partners.â
Respondent relies on sworn
affidavits of Mr. Schwartz and Mr. Fernando Roldán.
Mr. Roldán, who is currently
employed by Astra Zeneca Laboratories in Mexico, says he acted as a
consultant to Mexico.com in 2000, when he recommended to Mr.Schwartz
that he use the advertising agency FCB Mexico. Mr. Schwartz followed
this advice and his account executive there was Ms. Maria Elena Mancha,
who became CEO of Complainant in January 2001, and remained so until
about June 2003.
Mr. Roldán says he was
a consultant to Complainant from September 2002, until March2003. He
noticed that Complainantâs websites âwww.mexico-travel.comâ, âwww.visitmexico.comâ
and âwww.visitamexico.comâ had no user traffic and were doing a
poor job promoting Mexican tourism on the Internet. In late 2002/early
2003, he recommended to Ms. Mancha that she consider a meeting with
Mr. Schwartz to see if it was possible for Complainant to acquire mexico.com
to use to promote Mexican tourism. Ms. Mancha advised Mr. Roldán
to invite Mr. Schwartz to a meeting to discuss this possibility. The
meeting took place in January 2003. Ms. Mancha had to cancel at
the last minute but sent four representatives in her place, including
Mr.Muñoz.
Mr. Roldán says that at
the meeting, Mr. Muñoz asked if Mr. Schwartz would be willing to sell
the domain name <mexico.com>. Mr. Schwartz replied that
absolutely not, that Mexico.com was not simply a domain name but an
entire web site business. Mr.Schwartz further advised that he did not
have the authority to consider any sales proposal without unanimous
board approval and that although there was no interest in selling Mexico.com
in any circumstances whatsoever, he could not enter into any discussions
related to any offers to purchase Mexico.com without a non-disclosure
agreement (NDA). Notwithstanding, it was agreed Mr. Schwartz would
draft an NDA and send it to Complainant.
Mr. Roldán says Mr. Muñoz
asked Mr. Schwartz if he had any idea of the value of Mexico.com.
Mr. Schwartz said it was difficult to put any price to Mexico.com, nor
to its intellectual property rights. However, with the purpose
of providing them with some courtesy, he provided Mr. Muñoz with a
list of other high-profile domain names that had sold in the recent
past, such as <korea.com>,<business.com>, <wallstreet.com>
and <chicago.com>. Mr. Roldán did not recall whether Mr.
Schwartz discussed a particular price for Mexico.com.
Mr. Schwartzâ sworn evidence
accords with that of Mr. Roldán. He says he never received a signed
NDA and there were no further discussions regarding the sale of Mexico.com.
On April 24, 2003, on similar
terms to the licence previously mentioned, Complainant became non-exclusive
licensee from the Ministry of Tourism of Mexican registered trademark
698252, âMEXICO and designâ, registered in class 35 on May 8, 2001,
upon application made on March 29, 2001. The mark comprises the capitalized
word MEXICO with a castellated design superimposed in a band across
the lower part of each letter. This mark is prominently displayed outside
Complainantâs offices and has been frequently used on its stationery
in conjunction with part of Complainantâs name, as follows:
MEXICO
CONSEJO
DE PROMOCIÃN TURISTICA
Either alone or as part
of a slogan, the mark has also been displayed in advertisements promoting
tourism in Mexico, as in: âDiscover the many moods of MEXICOâ.
In July 2003, Complainant
sought assistance from the Mexican Governmentâs Federal Executive
Legal Consultancy in searching for trademarks owned by any other Government
agency that could be used to support a claim for the disputed domain
name. By letter dated August 28, 2003, the Legal Consultancy wrote to
the Assistant Secretary, Legal and Human Rights Affairs, Secretariat
of the Interior, referring to Complainant as having requested support
âto analyze the likelihood to claim the domain name <www.mexico.com>
and seeking, among other things, copies of trademark registration certificates
and applications made by the Mexican Government âregarding marks made
up solely of the word âMEXICOâ or of such word and other denominations
or figures⦠Any registration obtained before 1997, would be considerably
valuableâ. The letter also sought proof âthat the name âMEXICOâ
has been used as a trademark, i.e., as a distinguishing sign of products
and services in the tradeâ.
On March 5, 2004, on similar
terms to the licences previously mentioned, Complainant became non-exclusive
licensee from the Ministry of Tourism of the following Mexican registered
trademarks:
EN EL CORAZON DE MEXICO
[In the Heart of Mexico], No. 793376, registered in class 35 on May
28, 2003, upon application made on October29,2002, with a claimed first
use on June 16, 1999;
TIANGUIS TURISTICO
MEXICO (word mark) [Mexican Tourism Fair], No. 543888, registered in
class 42 on February 28, 1997, upon application made on February 17,
1997, with a claimed first use on May 5, 1993;
TIANGUIS TURISTICO
MEXICO (AND DESIGN), Nos. 544179 (class 39), 544180 (class 35), 544181
(class 25), 544182 (class 14), 544682 (class 16), 545584 (class 56),
555025 (class 25), 555026 (class 18), 556600 (class 42) and 561185 (class
8), registered on various dates between March 20, 1997, and October
27, 1997, upon applications filed on February 17, 1997, with a claimed
first use on May 5, 1993. The mark comprises a design featuring two
stylized human figures leaning towards each other with an apparent load
on their backs and occupying about three quarters of the space, beneath
which appear the words TIANGUIS TURISTICO, with the word MEXICO beneath
them, in type about twice as large as those words.
On March 17, 2004, Complainant
became registered as assignee from Banco Nacional De Comercio Exterior
S.N.C, of Mexico, of Mexican registered trademark 478857 in respect
of âInternational Commercial Fairsâ in Class 42. This mark was registered
on November 8, 1994, upon application made on August 23, 1993. The registration
has been renewed for a term of ten years from August 23, 2003. The mark
is a design in the form of a stylized square standing on one point,
above the horizontal capitalized word MEXICO, beneath which is a row
of downward pointing triangles, each about one third the height of the
letters of the word above. The row is coextensive with the length of
the word above.
The terms under which that
mark was assigned to Complainant are recorded in a separate agreement
between the bank and Complainant, which recites: â That on February
19, 2004, they entered into a right assignment agreement regarding the
trademark No. 478857, âWITH NO DENOMINATIONâ Class 42, with effective
date August 23, 1993, and file date November 8, 1994, owing to the fact
that [Complainant] is willing to own such mark in order to strengthen
its position in the lawsuit to be filed against the person currently
holding the domain site www.mexico.comâ. Complainant
undertook to transfer ownership of that mark to the assignor upon the
final resolution of that lawsuit.
As mentioned, the Complaint
was filed on March 30, 2004.
5.Partiesâ Contentions
A.Complainant
Rights
The trademark MEXICO has
been used since at least 1973, and has been intensely publicized both
within and outside Mexico in multimillion dollar campaigns.
Identity/confusing similarity
The disputed domain name
is identical or confusingly similar to trademark registrations 478857,
604142 and 698252 and is likely to cause confusion regarding the mark
TIANGUIS TURISTICO MEXICO.
Legitimacy
Respondent has no rights
or legitimate interests with respect to the disputed domain name. It
is not commonly known by the disputed domain name. It is not authorized
by Complainant or any other entity of the Government, such as the Ministry
of Tourism, to use the trademark MEXICO or any variants thereof.
Respondent has an established
practice of registering numerous domain names which incorporate in their
entirety highly distinctive, famous and well-known trademarks, such
as <guerradelasgalaxias.com> (Star Wars); <elchavo.com>
and <chavodelocho.com> (El Chavo being a popular Mexican TV character);
<piolin.com> (the cartoon character Tweety); <agustinlara.com>
(a world renowned Mexican composer); <supersonicos.com> (The Jetsons);
<losprotagonistas.com> (a famous radio/TV sports show); <alcoholicosanonimos.com>
(Alcoholics Anonymous); <mundoejecutivo.com> (a well known magazine
in Mexico) and <chapulincolorado.com> (one of the most important
heroes in Mexican television).
Respondent must have registered
these domain names expecting to obtain important amounts of money for
their transfer to their legitimate owners. Respondent must be taken
to be in the business of selling domain names that incorporate trademarks
to the owners of those marks.
In the case at hand, given
the widespread use of the trademark MEXICO in connection with tourism
goods and services, and the intensity with which this trademark has
been publicized both inside and outside Mexican territory by multi-million
dollar campaigns, Respondent must have selected the disputed domain
name with the expectation of obtaining a significant amount of money
in exchange for transferring this domain name to the rightful holder
of the trademark reflected therein.
Respondentâs use of the
disputed domain name has been blatantly in bad faith, since for more
than two years Mr. Rami Schwartz has been repeatedly attempting to sell
it to Complainant for $US1.2 million. This cannot be use in connection
with a bona fide offering of goods or services.
Respondentâs domains
are blocked and banned in several Spam Lists. The disputed domain name
is listed on Rhyollite.comâs Unwelcome Domain Name site and Mr.Schwartz
appears to have been sued for spam-related matters. In such circumstances
any claimed hosting or e-mail services cannot constitute a bona fide
offering of goods or services.
The website to which the
disputed domain resolves has no disclaimer of any association with Complainant
and may confuse and divert consumers seeking the information and services
covered by Complainantâs trademark MEXICO. They would be misled into
believing that the tourism services advertised are those selected and
monitored for quality by Complainant or those associated with the trademark
MEXICO in Complainantâs publicity campaigns.
Bad faith
The disputed domain name
was registered and is being used in bad faith. Respondent has registered
hundreds of domain names including at least a dozen which incorporate,
in their entirety, widely-known, famous or notorious trademarks. One
such trademark is the trademark MEXICO, used by Complainant or its predecessor
for more than 30 years. Mr. Schwartz has his residence in Mexico and
both he and Respondent have been exposed to the publicity enjoyed by
the trademark MEXICO in that country and in the United States. Respondent
therefore knew or should have known of the existence of the mark. This
is corroborated by the fact that Mr. Schwartz identified and targeted
Complainant as licensee and principal user of the mark and offered to
sell the disputed domain name to Complainant.
The amount sought (US $1.2
million) demonstrates bad faith registration and use.
Respondent acquired the
disputed domain name, as it did with other domain names, with intent
to contact the trademark owner and offer the domain name for sale for
a large amount of money. That is Respondentâs business.
Respondent registered the
disputed domain name to prevent Complainant from reflecting the trademark
MEXICO in a corresponding domain name, because Respondent knew of Complainantâs
mark MEXICO. Respondent has engaged in a pattern of registering approximately
a dozen famous or well-known trademarks as domain names.
Respondent has intentionally
attempted to attract, for commercial gain, Internet users to its website,
by creating a likelihood of confusion with Complainantâs highly publicized
trademark MEXICO as to the source, sponsorship, affiliation or endorsement
of Complainant [sic].
B.Respondent
Rights
Complainant does not have
rights to a trademark identical or confusingly similar to <mexico.com>.
After the registration date of the disputed domain name, all the marks
on which Complainant relies were either licensed non-exclusively to
it or, in the case of No. 478857, âloanedâ to it for the purposes
of this proceeding. None are truly owned by Complainant.
Marks 604142, 698252 and
793376 were all registered after the disputed domain name was registered.
There is no evidence Complainant has used the design mark 478857, which
it borrowed from the Banco Nacional. Only that mark and the âTianguis
Turistico Mexico and designâ marks were registered prior to the domain
name registration. The borrowed mark should be disregarded since Complainant
does not truly have rights to this mark. The âTianguis Turistico Mexico
and designâ marks are mere phrases incorporating Mexico, so they provide
no trademark rights to the word Mexico.
The letter dated August
28, 2003, from the Legal Consultancy to the Secretariat of the Interior
proves that Complainant did not itself believe it had trademark rights
to the term MEXICO because it had to ask the Federal Government for
assistance to find trademarks; the Government itself was unsure whether
it had trademark rights in that word since it had to request from its
agencies evidence of trademark use; and both Complainant and the Government
understood a trademark was needed that was made up âsolely of the
word MEXICOâ and was âobtained before 1997â to support this action.
The conclusion should be
drawn that Complainant has had no trademark rights for the word MEXICO
at any time and that Complainant knew it before filing the Complaint.
Complainant apparently
alleges common law rights based on its use of the mark âMexicoâ
in prominent and visible places. Complainantâs use of MEXICO
is in a mere descriptive sense, i.e. for the promotion of tourism to
Mexico. Complainant has not and cannot establish the necessary secondary
meaning, i.e. that consumers associate the word âMEXICOâ only with
Complainant, because numerous third parties use MEXICO in the same descriptive
sense.
Identity/confusing similarity
None of the marks on which
Complainant relies are identical or confusingly similar to the disputed
domain name. They are merely design marks, text with design or marks
incorporating the word Mexico in descriptive phrases. Complainant needs
to have a trademark for MEXICO standing alone to bring this proceeding:
Puerto Rico Tourism Co. v. Virtual Countries, Inc., WIPO Case No.
D2002-1129; Empresa Municipal Promoción Madrid S.A. v. Easylink
Services Corporation, WIPO Case No. D2002-1110; Chambre de Commerce
et dâIndustrie de Rouen v. Marcel Stenzel,
WIPO Case No. D2001-0348 and Brisbane City Council v. Warren Bolton
Consulting Pty Ltd., WIPO Case No. D2001-0047.
Legitimacy
Respondent has a legitimate
interest in the disputed domain name because it is using it in connection
with a bona fide offering of services at its âwww.mexico.comâ website.
Complainantâs own officials have previously acknowledged this. Complainantâs
former director, Ms. Mancha, was previously the executive at Respondentâs
advertising agency responsible for Respondentâs account under a $27,000
per month advertising contract. Complainantâs current Assistant Director,
Mr. Muñoz, submitted an affidavit to the USPTO which described mexico.com
as a site offering many services different from those offered by Complainant.
Respondentâs âwww.mexico.comâ
website is a classic example of bona fide use under the Policy.
See e.g. Pocatello Idaho Auditorium District v. CES Marketing Group
Inc., NAF Case No. FA103186; Kur- und Verkehrsverein St. Moritz
v. StMoritz.com, WIPO Case No. D2000-0617; Brisbane City Council
v. Warren Bolton Consulting Pty Ltd.,
WIPO Case No. D2001-0047; Port of Helsinki v. Paragon International
Projects Ltd., WIPO Case No. D2001-0002; City of Hamina v. Paragon
International Projects Ltd., WIPO Case No. D2001-0001 and Newport
News v. VCV Internet, eResolution Case No. AF0238.
Complainant tries to avoid
this substantial body of precedent by misrepresenting the nature of
Respondentâs website and attempting to mislead the Panel into believing
that Respondentâs intent all along was simply to profit from a sale
of the domain name. Complainant also argues that Respondentâs goods
and services cannot be bona fide because Respondent has been banned
on several spam lists. Complainant points to a person who sued
Respondent for spam-related matters. In fact Respondent has never transmitted
any spam. Because Respondent owns many domain names for its email service,
it is particularly vulnerable to a problem known as spoofing whereby
a spammer, desiring to hide its true identity, uses a forged return
address at a domain name owned by an innocent third party, making it
appear that the third party (in this case Respondent) transmitted the
spam. Such was the case with the lawsuit against Respondent. Respondent
requested a copy of the original email so it could be investigated,
but this was never provided.
Respondent also has a legitimate
interest under the Policy based on being known by the domain name. Respondent
operates Mexico.com, Inc., and Mexico.com LLC, both wholly owned subsidiaries
of Latin America Telecom. Respondent also owns registered trademarks
in the U.S. and Mexico for Mexico.com.
Bad faith
The disputed domain name
was not registered and is not being used in bad faith. Respondentâs
legitimate operation of the âwww.mexico.comâ website since 1997,
contradicts bad faith.
Contrary to its argument
that <mexico.com> is likely to create confusion with its licensed
and borrowed marks, Complainant told the USPTO something different in
2001, when it was seeking to prevent its application to register <visitmexico.com>
from being suspended due to [Respondentâs] prior filed application
to register <mexico.com>. There is no evidence of intent to cause
confusion on the part of Respondent.
Complainant cannot prove
that Respondent registered the disputed domain name with Complainant
in mind. There is no evidence that Complainant possessed any trademark
in November 1997, when the domain name was registered, and the earliest
date that Complainant licensed any of the marks on which it relies is
June 30, 2000 (mark 604142) almost three years later.
It is well established
that a Complainant cannot meet its burden of proving bad faith registration
of a domain name that is registered prior to the date of existence of
Complainantâs trademark, because Respondent could not have had knowledge
of the mark: Mytech Partners, Inc. v. Jebs Corp.,
NAF Case No. FA135645. In John Ode d/ba ODE and ODE
â Optimum Digital Enterprises v. Intership Limited, WIPO Case
No. D2001-0074, the Panel explained:
âThere are ample
authorities supporting the view that a trademark that did not exist
at the time the disputed domain name was registered cannot serve as
the basis for a claim under the ICANN Policy, since it is impossible
for the domain name to have been registered in bad faithâ.
Here Complainant itself
knew, even as late as July 2003, six years after the registration of
the disputed domain name, that it had no such trademark rights, since
it sought from the Government of Mexico assistance in seeking such trademarks
to bring this case. Respondentâs knowledge at the time of registration
of the disputed domain name can hardly have been superior to that of
Complainant. Respondent cannot be accused of registering a domain
name with intent to profit from a trademark that Complainant did not
possess, and knew that it did not possess, at the time the domain name
was registered.
The alleged sale discussions
do not establish bad faith registration or use. Even if the Panel accepts
Complainantâs version of events, Respondent certainly would have been
entitled to enter into negotiations to sell the disputed domain name
upon Complainantâs invitation: Pocatello Idaho Auditorium District
v. CES Marketing Group Inc., NAF Case No. FA103186. It would not
constitute bad faith if, as Complainant alleges, Respondent registered
the disputed domain name with intent to sell it, since the Policy requires
registration with intent to sell it to âcomplainant who is the owner
of the trademarkâ. Here Complainant did not own any trademark incorporating
MEXICO when the domain name was registered.
Complainant has also pointed
to other domain names Respondent has registered which Complainant alleges
contain famous marks. Respondent has registered many domain names that
contain Spanish words and others that are reflective of Mexican culture
to potentially use to offer as email addresses for its email service,
of which 100 are currently so used. There are 600,000 users signed up
for email service at Mexico.com. Most of the domain names are
common words and terms, registered to give users a choice of email addresses
that reflect diverse categories of interests. Respondent has never
offered to sell any of these domains as Complainant alleges.
Reverse domain name
hijacking
The facts and precedent
clearly demonstrate the absence of any validity to the Complaint under
each element of the Policy. Complainant has misrepresented every
element. Complainant borrowed a design trademark for Mexico in
February of this year under an agreement that states the loan of the
mark is solely to âstrengthen its positionâ in this proceeding â
a mark which it must return after the proceeding is completed.
Complainant claims Respondent does not operate a genuine web site when
Complainantâs former director had previously served as Respondentâs
advertising account executive, and its current assistant director was
well aware of the services offered at Mexico.com three years ago based
on Complainantâs letter to the PTO. Complainant invited Mr.
Schwartz to a meeting only to set him up for a trap intended to portray
him as a cybersquatter, and it then misrepresented what occurred at
the meeting. Notwithstanding the cost and effort Respondent has had
to put in defending this baseless Complaint, Complainant has caused
serious damage to Respondentâs reputation and the âwww.mexico.comâ
web site. If the facts of this case do not constitute reverse
domain name hijacking, it is hard to imagine what would.
6.Discussion and Findings
Paragraph15(a) of the Rules
requires the Panel to 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.
Under paragraph 4(a) of
the Policy, a Complainant bears the burden of showing:
(i)that the domain
name registered by the Respondent is identical or confusingly similar
to a trademark or service mark in which the Complainant has rights;
and
(ii)that the Respondent
has no rights or legitimate interests in respect of the domain name;
and
(iii)that the domain
name has been registered and is being used by the Respondent in bad
faith.
A.Rights in a trademark
The name Mexico is a geographical
indication. While geographical indications are not protected as such
under the Policy, they may nevertheless qualify for protection under
the Policy as trademarks if registered as such or if shown by evidence
of their use to have become distinctive of the goods or services of
a particular trader. In this respect they may be protected as trademarks
in the same way as descriptive (generic) words shown to have become
distinctive: Brisbane City Council v. Warren Bolton Consulting Pty
Ltd, WIPO Case No. D2001-0047; City
of Hamina v. Paragon International Projects Ltd., WIPO Case No.
D2001-0001; Port of Helsinki v. Paragon International Projects Ltd.,
WIPO Case No. D2001-0002; Wembley National Stadium v. Tim Gordon,
WIPO Case No. D2000-1218; Skipton Building Society v. Peter Colman,
WIPO Case No. D2000-1217; City of Salinas v. Brian Baughn, NAF
Case FA104000097076; Empresa Municipal Promoción Madrid v. Planners
Planners, WIPO Case No. D2002-1112; HER MAJESTY THE QUEEN, in
right of her Government in New Zealand et. al. v. Virtual Countries,
Inc, WIPO Case No. D2002-0754; Kur- und Verkehrsverein St. Moritz
v. StMoritz.com, WIPO Case No. D2000-0617; Kur- und Verkehrsverein
St. Moritz v. Domain Finance Ltd, WIPO Case No. D2004-0158 (June14,
2004) and the discussion at paragraphs 276 â286 of the Interim Report
of the Second WIPO Internet Domain Name Process of April 12, 2001.
Complainant has not established
that at the time of registration of the disputed domain name in 1997,
it had any rights in any of the marks upon which it relies. It did not
commence operations until 1999. Nor has Complainant shown, either prior
to the registration of the disputed domain name or prior to the filing
of the Complaint, use of any mark having as its dominant feature the
name Mexico in such a manner as to have acquired secondary meaning denoting
a sole source of goods or services.
However, Complainant has
established that when it filed the Complaint, it was the registered
proprietor of Mexican trademark 478857, which it had acquired by assignment
from Banco Nacional under the terms of the âloanâ agreement. Complainant
has also established that when it filed the Complaint, it was the non-exclusive
licensee, with the right to exercise legal actions to protect the trademark
as if it were the holder, of Mexican registered trademarks Nos. 604142,
698252, 793376, 543888, 544179, 544180, 544181, 544182, 544682, 545584,
555025, 555026, 556600 and 561185.
A licensee of a mark, even
a non-exclusive licensee, has sufficient rights for the purposes of
paragraph 4(a)(i) of the Policy: Grupo Televisa, S.A., Televisa,
S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v.
Party Night Inc., a/k/a Peter Carrington, WIPO Case No. D2003-0796;
Telcel, C.A. v. jerm and Jhonattan RamÃrez, WIPO Case No. D2002-0309;
Ingram Micro Inc. v. RJ, Inc. and Rick Juarez, WIPO Case No. D2001-0948
and Brown Thomas & Company Limited v. Domain Reservation,
WIPO Case No. D2001-0592.
Panels have expressed divergent
views on the important question whether the relevant time at which a
complainant must show that it has rights in a trademark is the time
of registration of the domain name or the time of the filing of the
Complaint. See Abt Electronics, Inc. v. Motherboards.com,
NAF Case No. FA0312000221239; Travant Solutions, Inc. v. Cole,
NAF Case No. FA 203177; Phoenix Mortgage Corp. v. Toggas, WIPO
Case No. D2001-0101; Razorbox, Inc. v. Skjodt, NAF Case NO. FA
150795; Iogen Corp. v. IOGEN, WIPO Case No. D2003-0544; Chiappetta
v. Morales, WIPO Case No. D2002-1103; Ode v. Intership Ltd.,
WIPO Case No. D2001-0074; Digital Vision,
Ltd. v. Advanced Chemill Sys., WIPO Case No. D2001-0827; Firstgate
Internet A.G. v. Soung, WIPO Case No. D2000-1311; eGalaxy Multimedia
Inc v. T1, NAF Case No. FA 101823; Roberta Chiappetta dba Discount
Hydroponics v. C. J. Morales, WIPO Case No. D2002-1103.
The rationale for the divergent
views was explained in Joe Cole v. Dave Skipper, WIPO Case No.
D2003-0843, as follows:
âThere are a large
number of decisions in which a complaint that relied upon a trade mark
that post-dated registration of the relevant domain name has failed.
These include Mr. Severiano Ballesteros Sota, Fairway, S.A. and Amen
Corner S.A. v. Patrick Waldron, WIPO Case No. D2001-0351. Where
in the Policy is the rationale for this approach to be found? One possibility
is that the words âat the time of registrationâ are to be implied
at the end of paragraph 4(a)(i); i.e. to say that the relevant trade
mark rights must exist at the time that the domain name is registered.
Another approach is to accept that there is no such time restraint in
paragraph 4(a)(i), but to say that the fact that a trade mark did not
exist at the time of the domain nameâs registration is a factor to
be taken into account on the issue of bad faith. The latter approach
is one that has been followed in a number of UDRP cases including, for
example, the recent decision of MADRID 2012, S.A v Scott Martin-MadridMan
Websites, WIPO Case No. D2003-0598â.
Many of the cases favouring
the former approach appear to proceed on the assumption that bad faith
is impossible unless the mark preceded the domain name. This Panel prefers
the view expressed by the learned panelist in ExecuJet Holdings Ltd.
v. Air Alpha America, Inc., WIPO Case No. D2002-0669 (October 7,
2002):
âFor the purposes
of the Policy, a domain name registration can have been undertaken in
bad faith even if the trade marks rights at which such bad faith was
directed arose after the registration of the domain name. This might
be the case where a registrant speculated on an impending merger between
companies that would create a new name combining in whole or in part
the names of the merger partners. Another example concerns the situation
where a registrant based its registration of the domain name on its
insider knowledge of the intentions of a (former) business partner or
employer in relation to the latterâs development of a new trademark.
From the intent of the Policy, it is clearly irrelevant whether a registrant
intended to abuse an existing trademark right or one which that registrant
specifically knew would ariseâ.
This Panel takes the view
that if a Complainant has registered a trademark or otherwise established
trademark rights prior to the filing of the Complaint, and the domain
name is found to be identical or confusingly similar to the mark, then
the relatively low threshold requirements of paragraph 4 (a)(i) of the
Policy are met. The mark may be a geographical indication but if it
is a registered or common law trademark, there are trademark rights
for the purpose of paragraph 4 (a)(i) of the Policy.
Accordingly the Panel finds
that Complainant has rights in the marks of which it was assignee or
licensee at the time it filed the Complaint.
B.Identical or Confusingly
Similar
Many cases have established
that âessentialâ or âvirtualâ identity is sufficient for the
purposes of the Policy: The Stanley Works and Stanley Logistics Inc.
v. Camp Creek Co., Inc., WIPO Case No.D2000-0113, Nokia Corporation
v. Nokiagirls.com a.k.a IBCC, WIPOCase No.D2000-0102; America
Online, Inc. v. Anson Chan, WIPO Case No.D2001-0004; Disney Enterprises,
Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case
No. D2001-0489; Komatsu Ltd. and Komatsu America International Company
v. RKWeb Ltd., WIPO Case No. D2000-0995;
America Online, Inc. v. Andy Hind, WIPO Case No. D2001-0642 and
The Toronto-Dominion Bank v. Boris Karpachev, WIPO Case No. D2000-1571.
The âborrowedâ mark
âMEXICO and square designâ, No. 478857 and the marks âMEXICO and
designâ, Nos. 604142 and 698252 all have as their dominant feature
the capitalized word MEXICO. The Panel finds the disputed domain name
to be virtually identical to these marks. The Complainant has established
this element of its case with respect to these marks.
As to the marks EN EL CORAZON
DE MEXICO and the various word and design marks TIANGUIS TURISTICO MEXICO,
the Panel finds that the word MEXICO is not their dominant feature and
the disputed domain name is not identical to any of them. The
similarity evaluation is made purely on a comparison between the trademark
and the alphanumeric string which makes up the domain name:
KeyCorp v. BruceBolton.com, WIPO Case No. D2004-0234, applying earlier
cases. For the same reason, the Panel finds the disputed domain
name is not confusingly similar to any of those marks. Complainant has
not established this element of its case with respect to those marks.
C.Rights or Legitimate
Interests
On the material before
the Panel, the Panel finds that Respondent registered <mexico.com>
based upon the sense of MEXICO as a geographic name, not upon any trademark
sense. Respondent has used the disputed domain name to operate
a web site providing a portal to access a global information network
featuring topics relating to Mexico, as Complainant admitted to the
USPTO in 2001. Accordingly, the Panel finds that Respondent is and since
1997, has been making a fair and bona fide use of the domain name and
thus has a legitimate interest in it.
Complainant has failed
to establish this element of its case.
D.Registered and Used
in Bad Faith
Even assuming that the
word MEXICO was being used as a trademark by Complainantâs predecessor,
the Tourism Ministry of Mexico, it is inconceivable to the Panel that
Respondent selected the domain name <mexico.com> because of any
trademark sense of the word MEXICO, rather than because of its sense
as the name of a country. That precludes a finding of bad faith
registration. Furthermore, there is no indication that Respondent
has used the disputed domain name in a manner related to its trademark
sense rather than its geographic sense. Even if Respondent did offer
it for sale to Complainant as alleged in the Complaint (five years after
registration), the context of that offer makes clear that the value
of the domain name derived from its geographic rather than its trademark
sense.
Accordingly the Panel is
not satisfied that the domain name was registered primarily for the
purpose of selling, renting or otherwise transferring the registration
to Complainant or to a competitor of Complainant; to prevent Complainant
from reflecting a mark in a corresponding domain name nor primarily
for the purpose of disrupting the business of a competitor.
Nor is the Panel satisfied
that Respondent, by using the disputed domain name, has intentionally
attempted to attract, for commercial gain, Internet users to its website
or other on-line location, by creating a likelihood of confusion with
Complainantâs mark as to the source, sponsorship, affiliation or endorsement
of Respondentâs web site or location or of a product or service on
its web site or location. In this regard, Complainant has not
persuaded the Panel that Internet users, typing the word MEXICO into
their browsers, expect to find the goods or services of Complainant,
as distinct from goods, services or information about the country Mexico.
Nor is the Panel satisfied
that there are any other circumstances evidencing bad faith registration
or use on the part of Respondent.
Complainant has failed
to establish this element of its case.
E.Reverse
Domain Name Hijacking
The Complaint having failed,
the Panel has regard to the Rules, paragraph 15(e):
âIf 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 and abuse of the Administrative Proceeding.â
Reverse Domain Name Hijacking
is defined in the Rules, paragraph 1 as âusing the Policy in bad faith
to attempt to deprive a registered domain name holder of a domain name.â
To prevail on such a claim, a respondent must show either that the complainant
knew of the respondentâs unassailable right or legitimate interest
in the disputed domain name or the clear lack of bad faith registration
and use, and nevertheless brought the Complaint in bad faith: Sydney
Opera House Trust v. Trilynx Pty. Ltd., WIPO Case No. D2000-1224
and Goldline International, Inc. v. Gold Line,
WIPO Case No. D2000-1151 or that the Complaint was brought in knowing
disregard of the likelihood that the respondent possessed legitimate
interests: Smart Design LLC v. Hughes, WIPO Case No. D2000-0993;
or that the complainant knew it had no rights in the trademark or service
mark upon which it relied and nevertheless brought the Complaint in
bad faith: Dan Zuckerman v. Vincent Peeris, WIPO Case No. DBIZ2002-00245;
HER MAJESTY THE QUEEN, in right of her Government in New Zealand, as
Trustee for the Citizens, Organisations and State of New Zealand, acting
by and through the Honourable Jim Sutton, the Associate Minister of
Foreign Affairs and Trade v. Virtual Countries, Inc.,
WIPO Case No. D2002-0754.
Here there are two grounds
for a finding of Reverse Domain Name Hijacking. First, the Panel
considers that Complainantâs submission in 2001 to the USPTO constitutes
an acknowledgement both of Respondentâs legitimate interest in the
disputed domain name and that the disputed domain name was not registered
and is not being used in bad faith.
Second, by majority, with
Mr. Moreno-Torres dissenting, the Panel finds that Complainant acted
in bad faith by relying on a mark borrowed for the purpose of improving
its position in these proceedings.
Accordingly the Panel finds
this to be a case of Reverse Domain Name Hijacking.
7.Decision
For all the foregoing reasons,
the Complaint is denied and the Panel declares that the Complaint was
brought in bad faith and constitutes an abuse of the Administrative
Proceeding.
______________________
Alan L. Limbury
Presiding Panelist
______________________
Manuel Moreno-Torres
Panelist
______________________
David E. Sorkin
Panelist
Dated: July
19, 2004
page
page
WIPO Arbitration
and Mediation Center
ADMINISTRATIVE
PANEL DECISION
Consejo de
Promoción TurÃstica de México, S.A. de C.V. v.
Latin America Telecom Inc.
Case No.
D2004-0242
1.The Parties
The Complainant is Consejo
de Promoción TurÃstica de México, S.A. de C.V., Colonia Anzures,
Mexico, represented by Bello, Guzmán, Morales Y Tsuru, S.C., Mexico.
The Respondent is Latin
America Telecom Inc., Pittsburgh, PA Pennsylvania, UnitedStates of America,
represented by ESQwire.com Law Firm, United States of America.
2.The Domain Name and Registrar
The disputed domain name
<mexico.com> is registered with Register.com.
3.Procedural History
The Complaint was filed
in the Spanish language with the WIPO Arbitration and Mediation Center
(the âCenterâ) on March 30, 2004. On April 6, 2004, the Center
transmitted by email to Register.com a request for registrar verification
in connection with the disputed domain name. On April 6, 2004,
Register.com transmitted by email to the Center its verification response
confirming that the Respondent is listed as the registrant; providing
the contact details for the administrative, billing, and technical contact
and stating that the language used at the time of registration was English.
The Center verified that the Complaint satisfied the formal requirements
of the Uniform Domain Name Dispute Resolution Policy (the âPolicyâ),
the Rules for Uniform Domain Name Dispute Resolution Policy (the âRulesâ),
and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution
Policy (the âSupplemental Rulesâ).
In accordance with the
Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent
of the Complaint and the proceedings commenced on April 6, 2004.
In response to objections from the Respondent regarding the language
of the proceedings, the Center asked the Complainant to translate the
Complaint into English. An English language Complaint was filed with
the Center on April 30, 2004, and the Center extended the due date for
the Response to May 20, 2004. The Response was filed in the English
language with the Center on May 21, 2004.
The Center appointed Alan
L. Limbury, Manuel Moreno-Torres and David E. Sorkin as panelists in
this matter on June 21, 2004. The Panel finds that it was properly
constituted. Each member of 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.
Language of the proceeding
The Panel has considered
Complainantâs submission that that this proceeding should be conducted
in Spanish, based on its own character as a majority Government-owned
company incorporated and domiciled in Mexico; upon connections between
Respondent and Mexico; upon familiarity on the part of the CEO of Respondent,
Mr.Rami Schwartz, with the Spanish language; upon considerations of
expense and delay and upon a concern that the translation of its evidence
into English might inequitably disadvantage Complainant.
Pursuant to the Rules,
paragraph 11(a), the language of the administrative proceeding shall
be the language of the registration agreement unless otherwise agreed
by the parties, specified in the registration agreement or determined
by the Panel. The parties have not made any such agreement. The registrar
is a New York company, the language of the registration agreement is
English and no other language is specified in that agreement.
Respondent is a United States company incorporated in Delaware and having
an address in Mexico. Mr. Schwartz does appear to be fluent in Spanish.
Respondent is represented by an American attorney and the Response is
in English.
The Complainant has complied
with the Centerâs request to translate the Complaint into (well expressed)
English. Some of the Exhibits remain in Spanish. Although there has
already been delay in the proceeding and additional cost incurred by
Complainant in translating the Complaint, there would be additional
delay and cost incurred if Respondent were now required to translate
its Response into Spanish. In all the circumstances the Panel is not
disposed to determine that the language of the proceeding should be
other than English.
Accordingly the language
of the proceeding is English.
Extension of time for
decision
On July 6, 2004, in accordance
with the Rules paragraph 10(c), the date by which the Panel is required
to forward its decision to the Center was extended to July 19, 2004.
On July 19, 2004, the date was further extended by the Panel to July
24, 2004. In the event the further extension was not needed.
4.Factual Background (chronological)
The disputed domain name
<mexico.com> was registered on November 14, 1997. The registrant
was recorded as âLatin America Telecom Inc. Rami Schwartzâ.
Mr.Schwartz is the CEO of Latin America Telecom Inc. and principal contact
for domain name purposes. The Panel will refer to the registrant collectively
as Respondent.
The website to which the
disputed domain resolves contains information relating to Mexico and
has a portion comprising advertisements for tourism services, such as
hotels, transportation, restaurants and entertainment.
Complainant, the Mexico
Tourism Board, commenced operations in October 1999. It is an incorporated
company, majority owned by the Government of Mexico. Its main function
is to plan and coordinate, in conjunction with the Tourism Ministry
of Mexico, the policy and strategy for promoting, both nationally and
internationally, the tourism of Mexico. Many of its activities had been
conducted over the previous three decades by its predecessor, the Tourism
Ministry. Complainant is authorized by the Ministry of Foreign Affairs
to operate offices in many major cities of the world, including five
in the United States of America.
On March 26, 2001, Complainantâs
representative submitted to the United States Patent and Trademark Office
(about the Respondentâs website) that:
âThe website
for MEXICO.COM is a general information site about Mexico, and includes
information such as employment in Mexico, classified advertisements,
horoscopes, current news events, financial and stock quotes, and product
information and sale of a variety of items including books, cdâs,
computers, electronics and groceries.â
On June 19, 2001, Complainant
became non-exclusive licensee from the Ministry of Tourism of Mexican
registered trademark 604142, âMEXICO and designâ, registered in
class 35 on March 29, 1999, upon application made on November 19, 1998.
The licence provides that Complainant is entitled to exercise legal
actions to protect the trademark as if it were the holder. The dominant
feature of this mark is the capitalized word MEXICO.
In late 2002 or early 2003,
there was a meeting between the parties, as to which there is conflicting
evidence before the Panel. It is convenient to set out here the partiesâ
respective versions of what occurred, so that the meeting may be appreciated
in its chronological setting.
Complainant relies on a
notarized statement under oath by Mr. Gabriel Moctezuma Muñoz, Complainantâs
Assistant Managing Director and Legal Representative.
Mr. Muñoz says that at
the end of 2002 (without recalling the exact date), he attended a meeting
with Mr. Rami Schwartz and others at Complainantâs offices, at which
âthe only subject discussed⦠was the sale offer made by⦠Mr. Schwartz
regarding the domain name <mexico.com> to [Complainant] stating
that he was the owner thereof and stating that its price was [US $1.2
million], subject to negotiation and the prior agreement of his partners.â
Respondent relies on sworn
affidavits of Mr. Schwartz and Mr. Fernando Roldán.
Mr. Roldán, who is currently
employed by Astra Zeneca Laboratories in Mexico, says he acted as a
consultant to Mexico.com in 2000, when he recommended to Mr.Schwartz
that he use the advertising agency FCB Mexico. Mr. Schwartz followed
this advice and his account executive there was Ms. Maria Elena Mancha,
who became CEO of Complainant in January 2001, and remained so until
about June 2003.
Mr. Roldán says he was
a consultant to Complainant from September 2002, until March2003. He
noticed that Complainantâs websites âwww.mexico-travel.comâ, âwww.visitmexico.comâ
and âwww.visitamexico.comâ had no user traffic and were doing a
poor job promoting Mexican tourism on the Internet. In late 2002/early
2003, he recommended to Ms. Mancha that she consider a meeting with
Mr. Schwartz to see if it was possible for Complainant to acquire mexico.com
to use to promote Mexican tourism. Ms. Mancha advised Mr. Roldán
to invite Mr. Schwartz to a meeting to discuss this possibility. The
meeting took place in January 2003. Ms. Mancha had to cancel at
the last minute but sent four representatives in her place, including
Mr.Muñoz.
Mr. Roldán says that at
the meeting, Mr. Muñoz asked if Mr. Schwartz would be willing to sell
the domain name <mexico.com>. Mr. Schwartz replied that
absolutely not, that Mexico.com was not simply a domain name but an
entire web site business. Mr.Schwartz further advised that he did not
have the authority to consider any sales proposal without unanimous
board approval and that although there was no interest in selling Mexico.com
in any circumstances whatsoever, he could not enter into any discussions
related to any offers to purchase Mexico.com without a non-disclosure
agreement (NDA). Notwithstanding, it was agreed Mr. Schwartz would
draft an NDA and send it to Complainant.
Mr. Roldán says Mr. Muñoz
asked Mr. Schwartz if he had any idea of the value of Mexico.com.
Mr. Schwartz said it was difficult to put any price to Mexico.com, nor
to its intellectual property rights. However, with the purpose
of providing them with some courtesy, he provided Mr. Muñoz with a
list of other high-profile domain names that had sold in the recent
past, such as <korea.com>,<business.com>, <wallstreet.com>
and <chicago.com>. Mr. Roldán did not recall whether Mr.
Schwartz discussed a particular price for Mexico.com.
Mr. Schwartzâ sworn evidence
accords with that of Mr. Roldán. He says he never received a signed
NDA and there were no further discussions regarding the sale of Mexico.com.
On April 24, 2003, on similar
terms to the licence previously mentioned, Complainant became non-exclusive
licensee from the Ministry of Tourism of Mexican registered trademark
698252, âMEXICO and designâ, registered in class 35 on May 8, 2001,
upon application made on March 29, 2001. The mark comprises the capitalized
word MEXICO with a castellated design superimposed in a band across
the lower part of each letter. This mark is prominently displayed outside
Complainantâs offices and has been frequently used on its stationery
in conjunction with part of Complainantâs name, as follows:
MEXICO
CONSEJO
DE PROMOCIÃN TURISTICA
Either alone or as part
of a slogan, the mark has also been displayed in advertisements promoting
tourism in Mexico, as in: âDiscover the many moods of MEXICOâ.
In July 2003, Complainant
sought assistance from the Mexican Governmentâs Federal Executive
Legal Consultancy in searching for trademarks owned by any other Government
agency that could be used to support a claim for the disputed domain
name. By letter dated August 28, 2003, the Legal Consultancy wrote to
the Assistant Secretary, Legal and Human Rights Affairs, Secretariat
of the Interior, referring to Complainant as having requested support
âto analyze the likelihood to claim the domain name <www.mexico.com>
and seeking, among other things, copies of trademark registration certificates
and applications made by the Mexican Government âregarding marks made
up solely of the word âMEXICOâ or of such word and other denominations
or figures⦠Any registration obtained before 1997, would be considerably
valuableâ. The letter also sought proof âthat the name âMEXICOâ
has been used as a trademark, i.e., as a distinguishing sign of products
and services in the tradeâ.
On March 5, 2004, on similar
terms to the licences previously mentioned, Complainant became non-exclusive
licensee from the Ministry of Tourism of the following Mexican registered
trademarks:
EN EL CORAZON DE MEXICO
[In the Heart of Mexico], No. 793376, registered in class 35 on May
28, 2003, upon application made on October29,2002, with a claimed first
use on June 16, 1999;
TIANGUIS TURISTICO
MEXICO (word mark) [Mexican Tourism Fair], No. 543888, registered in
class 42 on February 28, 1997, upon application made on February 17,
1997, with a claimed first use on May 5, 1993;
TIANGUIS TURISTICO
MEXICO (AND DESIGN), Nos. 544179 (class 39), 544180 (class 35), 544181
(class 25), 544182 (class 14), 544682 (class 16), 545584 (class 56),
555025 (class 25), 555026 (class 18), 556600 (class 42) and 561185 (class
8), registered on various dates between March 20, 1997, and October
27, 1997, upon applications filed on February 17, 1997, with a claimed
first use on May 5, 1993. The mark comprises a design featuring two
stylized human figures leaning towards each other with an apparent load
on their backs and occupying about three quarters of the space, beneath
which appear the words TIANGUIS TURISTICO, with the word MEXICO beneath
them, in type about twice as large as those words.
On March 17, 2004, Complainant
became registered as assignee from Banco Nacional De Comercio Exterior
S.N.C, of Mexico, of Mexican registered trademark 478857 in respect
of âInternational Commercial Fairsâ in Class 42. This mark was registered
on November 8, 1994, upon application made on August 23, 1993. The registration
has been renewed for a term of ten years from August 23, 2003. The mark
is a design in the form of a stylized square standing on one point,
above the horizontal capitalized word MEXICO, beneath which is a row
of downward pointing triangles, each about one third the height of the
letters of the word above. The row is coextensive with the length of
the word above.
The terms under which that
mark was assigned to Complainant are recorded in a separate agreement
between the bank and Complainant, which recites: â That on February
19, 2004, they entered into a right assignment agreement regarding the
trademark No. 478857, âWITH NO DENOMINATIONâ Class 42, with effective
date August 23, 1993, and file date November 8, 1994, owing to the fact
that [Complainant] is willing to own such mark in order to strengthen
its position in the lawsuit to be filed against the person currently
holding the domain site www.mexico.comâ. Complainant
undertook to transfer ownership of that mark to the assignor upon the
final resolution of that lawsuit.
As mentioned, the Complaint
was filed on March 30, 2004.
5.Partiesâ Contentions
A.Complainant
Rights
The trademark MEXICO has
been used since at least 1973, and has been intensely publicized both
within and outside Mexico in multimillion dollar campaigns.
Identity/confusing similarity
The disputed domain name
is identical or confusingly similar to trademark registrations 478857,
604142 and 698252 and is likely to cause confusion regarding the mark
TIANGUIS TURISTICO MEXICO.
Legitimacy
Respondent has no rights
or legitimate interests with respect to the disputed domain name. It
is not commonly known by the disputed domain name. It is not authorized
by Complainant or any other entity of the Government, such as the Ministry
of Tourism, to use the trademark MEXICO or any variants thereof.
Respondent has an established
practice of registering numerous domain names which incorporate in their
entirety highly distinctive, famous and well-known trademarks, such
as <guerradelasgalaxias.com> (Star Wars); <elchavo.com>
and <chavodelocho.com> (El Chavo being a popular Mexican TV character);
<piolin.com> (the cartoon character Tweety); <agustinlara.com>
(a world renowned Mexican composer); <supersonicos.com> (The Jetsons);
<losprotagonistas.com> (a famous radio/TV sports show); <alcoholicosanonimos.com>
(Alcoholics Anonymous); <mundoejecutivo.com> (a well known magazine
in Mexico) and <chapulincolorado.com> (one of the most important
heroes in Mexican television).
Respondent must have registered
these domain names expecting to obtain important amounts of money for
their transfer to their legitimate owners. Respondent must be taken
to be in the business of selling domain names that incorporate trademarks
to the owners of those marks.
In the case at hand, given
the widespread use of the trademark MEXICO in connection with tourism
goods and services, and the intensity with which this trademark has
been publicized both inside and outside Mexican territory by multi-million
dollar campaigns, Respondent must have selected the disputed domain
name with the expectation of obtaining a significant amount of money
in exchange for transferring this domain name to the rightful holder
of the trademark reflected therein.
Respondentâs use of the
disputed domain name has been blatantly in bad faith, since for more
than two years Mr. Rami Schwartz has been repeatedly attempting to sell
it to Complainant for $US1.2 million. This cannot be use in connection
with a bona fide offering of goods or services.
Respondentâs domains
are blocked and banned in several Spam Lists. The disputed domain name
is listed on Rhyollite.comâs Unwelcome Domain Name site and Mr.Schwartz
appears to have been sued for spam-related matters. In such circumstances
any claimed hosting or e-mail services cannot constitute a bona fide
offering of goods or services.
The website to which the
disputed domain resolves has no disclaimer of any association with Complainant
and may confuse and divert consumers seeking the information and services
covered by Complainantâs trademark MEXICO. They would be misled into
believing that the tourism services advertised are those selected and
monitored for quality by Complainant or those associated with the trademark
MEXICO in Complainantâs publicity campaigns.
Bad faith
The disputed domain name
was registered and is being used in bad faith. Respondent has registered
hundreds of domain names including at least a dozen which incorporate,
in their entirety, widely-known, famous or notorious trademarks. One
such trademark is the trademark MEXICO, used by Complainant or its predecessor
for more than 30 years. Mr. Schwartz has his residence in Mexico and
both he and Respondent have been exposed to the publicity enjoyed by
the trademark MEXICO in that country and in the United States. Respondent
therefore knew or should have known of the existence of the mark. This
is corroborated by the fact that Mr. Schwartz identified and targeted
Complainant as licensee and principal user of the mark and offered to
sell the disputed domain name to Complainant.
The amount sought (US $1.2
million) demonstrates bad faith registration and use.
Respondent acquired the
disputed domain name, as it did with other domain names, with intent
to contact the trademark owner and offer the domain name for sale for
a large amount of money. That is Respondentâs business.
Respondent registered the
disputed domain name to prevent Complainant from reflecting the trademark
MEXICO in a corresponding domain name, because Respondent knew of Complainantâs
mark MEXICO. Respondent has engaged in a pattern of registering approximately
a dozen famous or well-known trademarks as domain names.
Respondent has intentionally
attempted to attract, for commercial gain, Internet users to its website,
by creating a likelihood of confusion with Complainantâs highly publicized
trademark MEXICO as to the source, sponsorship, affiliation or endorsement
of Complainant [sic].
B.Respondent
Rights
Complainant does not have
rights to a trademark identical or confusingly similar to <mexico.com>.
After the registration date of the disputed domain name, all the marks
on which Complainant relies were either licensed non-exclusively to
it or, in the case of No. 478857, âloanedâ to it for the purposes
of this proceeding. None are truly owned by Complainant.
Marks 604142, 698252 and
793376 were all registered after the disputed domain name was registered.
There is no evidence Complainant has used the design mark 478857, which
it borrowed from the Banco Nacional. Only that mark and the âTianguis
Turistico Mexico and designâ marks were registered prior to the domain
name registration. The borrowed mark should be disregarded since Complainant
does not truly have rights to this mark. The âTianguis Turistico Mexico
and designâ marks are mere phrases incorporating Mexico, so they provide
no trademark rights to the word Mexico.
The letter dated August
28, 2003, from the Legal Consultancy to the Secretariat of the Interior
proves that Complainant did not itself believe it had trademark rights
to the term MEXICO because it had to ask the Federal Government for
assistance to find trademarks; the Government itself was unsure whether
it had trademark rights in that word since it had to request from its
agencies evidence of trademark use; and both Complainant and the Government
understood a trademark was needed that was made up âsolely of the
word MEXICOâ and was âobtained before 1997â to support this action.
The conclusion should be
drawn that Complainant has had no trademark rights for the word MEXICO
at any time and that Complainant knew it before filing the Complaint.
Complainant apparently
alleges common law rights based on its use of the mark âMexicoâ
in prominent and visible places. Complainantâs use of MEXICO
is in a mere descriptive sense, i.e. for the promotion of tourism to
Mexico. Complainant has not and cannot establish the necessary secondary
meaning, i.e. that consumers associate the word âMEXICOâ only with
Complainant, because numerous third parties use MEXICO in the same descriptive
sense.
Identity/confusing similarity
None of the marks on which
Complainant relies are identical or confusingly similar to the disputed
domain name. They are merely design marks, text with design or marks
incorporating the word Mexico in descriptive phrases. Complainant needs
to have a trademark for MEXICO standing alone to bring this proceeding:
Puerto Rico Tourism Co. v. Virtual Countries, Inc., WIPO Case No.
D2002-1129; Empresa Municipal Promoción Madrid S.A. v. Easylink
Services Corporation, WIPO Case No. D2002-1110; Chambre de Commerce
et dâIndustrie de Rouen v. Marcel Stenzel,
WIPO Case No. D2001-0348 and Brisbane City Council v. Warren Bolton
Consulting Pty Ltd., WIPO Case No. D2001-0047.
Legitimacy
Respondent has a legitimate
interest in the disputed domain name because it is using it in connection
with a bona fide offering of services at its âwww.mexico.comâ website.
Complainantâs own officials have previously acknowledged this. Complainantâs
former director, Ms. Mancha, was previously the executive at Respondentâs
advertising agency responsible for Respondentâs account under a $27,000
per month advertising contract. Complainantâs current Assistant Director,
Mr. Muñoz, submitted an affidavit to the USPTO which described mexico.com
as a site offering many services different from those offered by Complainant.
Respondentâs âwww.mexico.comâ
website is a classic example of bona fide use under the Policy.
See e.g. Pocatello Idaho Auditorium District v. CES Marketing Group
Inc., NAF Case No. FA103186; Kur- und Verkehrsverein St. Moritz
v. StMoritz.com, WIPO Case No. D2000-0617; Brisbane City Council
v. Warren Bolton Consulting Pty Ltd.,
WIPO Case No. D2001-0047; Port of Helsinki v. Paragon International
Projects Ltd., WIPO Case No. D2001-0002; City of Hamina v. Paragon
International Projects Ltd., WIPO Case No. D2001-0001 and Newport
News v. VCV Internet, eResolution Case No. AF0238.
Complainant tries to avoid
this substantial body of precedent by misrepresenting the nature of
Respondentâs website and attempting to mislead the Panel into believing
that Respondentâs intent all along was simply to profit from a sale
of the domain name. Complainant also argues that Respondentâs goods
and services cannot be bona fide because Respondent has been banned
on several spam lists. Complainant points to a person who sued
Respondent for spam-related matters. In fact Respondent has never transmitted
any spam. Because Respondent owns many domain names for its email service,
it is particularly vulnerable to a problem known as spoofing whereby
a spammer, desiring to hide its true identity, uses a forged return
address at a domain name owned by an innocent third party, making it
appear that the third party (in this case Respondent) transmitted the
spam. Such was the case with the lawsuit against Respondent. Respondent
requested a copy of the original email so it could be investigated,
but this was never provided.
Respondent also has a legitimate
interest under the Policy based on being known by the domain name. Respondent
operates Mexico.com, Inc., and Mexico.com LLC, both wholly owned subsidiaries
of Latin America Telecom. Respondent also owns registered trademarks
in the U.S. and Mexico for Mexico.com.
Bad faith
The disputed domain name
was not registered and is not being used in bad faith. Respondentâs
legitimate operation of the âwww.mexico.comâ website since 1997,
contradicts bad faith.
Contrary to its argument
that <mexico.com> is likely to create confusion with its licensed
and borrowed marks, Complainant told the USPTO something different in
2001, when it was seeking to prevent its application to register <visitmexico.com>
from being suspended due to [Respondentâs] prior filed application
to register <mexico.com>. There is no evidence of intent to cause
confusion on the part of Respondent.
Complainant cannot prove
that Respondent registered the disputed domain name with Complainant
in mind. There is no evidence that Complainant possessed any trademark
in November 1997, when the domain name was registered, and the earliest
date that Complainant licensed any of the marks on which it relies is
June 30, 2000 (mark 604142) almost three years later.
It is well established
that a Complainant cannot meet its burden of proving bad faith registration
of a domain name that is registered prior to the date of existence of
Complainantâs trademark, because Respondent could not have had knowledge
of the mark: Mytech Partners, Inc. v. Jebs Corp.,
NAF Case No. FA135645. In John Ode d/ba ODE and ODE
â Optimum Digital Enterprises v. Intership Limited, WIPO Case
No. D2001-0074, the Panel explained:
âThere are ample
authorities supporting the view that a trademark that did not exist
at the time the disputed domain name was registered cannot serve as
the basis for a claim under the ICANN Policy, since it is impossible
for the domain name to have been registered in bad faithâ.
Here Complainant itself
knew, even as late as July 2003, six years after the registration of
the disputed domain name, that it had no such trademark rights, since
it sought from the Government of Mexico assistance in seeking such trademarks
to bring this case. Respondentâs knowledge at the time of registration
of the disputed domain name can hardly have been superior to that of
Complainant. Respondent cannot be accused of registering a domain
name with intent to profit from a trademark that Complainant did not
possess, and knew that it did not possess, at the time the domain name
was registered.
The alleged sale discussions
do not establish bad faith registration or use. Even if the Panel accepts
Complainantâs version of events, Respondent certainly would have been
entitled to enter into negotiations to sell the disputed domain name
upon Complainantâs invitation: Pocatello Idaho Auditorium District
v. CES Marketing Group Inc., NAF Case No. FA103186. It would not
constitute bad faith if, as Complainant alleges, Respondent registered
the disputed domain name with intent to sell it, since the Policy requires
registration with intent to sell it to âcomplainant who is the owner
of the trademarkâ. Here Complainant did not own any trademark incorporating
MEXICO when the domain name was registered.
Complainant has also pointed
to other domain names Respondent has registered which Complainant alleges
contain famous marks. Respondent has registered many domain names that
contain Spanish words and others that are reflective of Mexican culture
to potentially use to offer as email addresses for its email service,
of which 100 are currently so used. There are 600,000 users signed up
for email service at Mexico.com. Most of the domain names are
common words and terms, registered to give users a choice of email addresses
that reflect diverse categories of interests. Respondent has never
offered to sell any of these domains as Complainant alleges.
Reverse domain name
hijacking
The facts and precedent
clearly demonstrate the absence of any validity to the Complaint under
each element of the Policy. Complainant has misrepresented every
element. Complainant borrowed a design trademark for Mexico in
February of this year under an agreement that states the loan of the
mark is solely to âstrengthen its positionâ in this proceeding â
a mark which it must return after the proceeding is completed.
Complainant claims Respondent does not operate a genuine web site when
Complainantâs former director had previously served as Respondentâs
advertising account executive, and its current assistant director was
well aware of the services offered at Mexico.com three years ago based
on Complainantâs letter to the PTO. Complainant invited Mr.
Schwartz to a meeting only to set him up for a trap intended to portray
him as a cybersquatter, and it then misrepresented what occurred at
the meeting. Notwithstanding the cost and effort Respondent has had
to put in defending this baseless Complaint, Complainant has caused
serious damage to Respondentâs reputation and the âwww.mexico.comâ
web site. If the facts of this case do not constitute reverse
domain name hijacking, it is hard to imagine what would.
6.Discussion and Findings
Paragraph15(a) of the Rules
requires the Panel to 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.
Under paragraph 4(a) of
the Policy, a Complainant bears the burden of showing:
(i)that the domain
name registered by the Respondent is identical or confusingly similar
to a trademark or service mark in which the Complainant has rights;
and
(ii)that the Respondent
has no rights or legitimate interests in respect of the domain name;
and
(iii)that the domain
name has been registered and is being used by the Respondent in bad
faith.
A.Rights in a trademark
The name Mexico is a geographical
indication. While geographical indications are not protected as such
under the Policy, they may nevertheless qualify for protection under
the Policy as trademarks if registered as such or if shown by evidence
of their use to have become distinctive of the goods or services of
a particular trader. In this respect they may be protected as trademarks
in the same way as descriptive (generic) words shown to have become
distinctive: Brisbane City Council v. Warren Bolton Consulting Pty
Ltd, WIPO Case No. D2001-0047; City
of Hamina v. Paragon International Projects Ltd., WIPO Case No.
D2001-0001; Port of Helsinki v. Paragon International Projects Ltd.,
WIPO Case No. D2001-0002; Wembley National Stadium v. Tim Gordon,
WIPO Case No. D2000-1218; Skipton Building Society v. Peter Colman,
WIPO Case No. D2000-1217; City of Salinas v. Brian Baughn, NAF
Case FA104000097076; Empresa Municipal Promoción Madrid v. Planners
Planners, WIPO Case No. D2002-1112; HER MAJESTY THE QUEEN, in
right of her Government in New Zealand et. al. v. Virtual Countries,
Inc, WIPO Case No. D2002-0754; Kur- und Verkehrsverein St. Moritz
v. StMoritz.com, WIPO Case No. D2000-0617; Kur- und Verkehrsverein
St. Moritz v. Domain Finance Ltd, WIPO Case No. D2004-0158 (June14,
2004) and the discussion at paragraphs 276 â286 of the Interim Report
of the Second WIPO Internet Domain Name Process of April 12, 2001.
Complainant has not established
that at the time of registration of the disputed domain name in 1997,
it had any rights in any of the marks upon which it relies. It did not
commence operations until 1999. Nor has Complainant shown, either prior
to the registration of the disputed domain name or prior to the filing
of the Complaint, use of any mark having as its dominant feature the
name Mexico in such a manner as to have acquired secondary meaning denoting
a sole source of goods or services.
However, Complainant has
established that when it filed the Complaint, it was the registered
proprietor of Mexican trademark 478857, which it had acquired by assignment
from Banco Nacional under the terms of the âloanâ agreement. Complainant
has also established that when it filed the Complaint, it was the non-exclusive
licensee, with the right to exercise legal actions to protect the trademark
as if it were the holder, of Mexican registered trademarks Nos. 604142,
698252, 793376, 543888, 544179, 544180, 544181, 544182, 544682, 545584,
555025, 555026, 556600 and 561185.
A licensee of a mark, even
a non-exclusive licensee, has sufficient rights for the purposes of
paragraph 4(a)(i) of the Policy: Grupo Televisa, S.A., Televisa,
S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v.
Party Night Inc., a/k/a Peter Carrington, WIPO Case No. D2003-0796;
Telcel, C.A. v. jerm and Jhonattan RamÃrez, WIPO Case No. D2002-0309;
Ingram Micro Inc. v. RJ, Inc. and Rick Juarez, WIPO Case No. D2001-0948
and Brown Thomas & Company Limited v. Domain Reservation,
WIPO Case No. D2001-0592.
Panels have expressed divergent
views on the important question whether the relevant time at which a
complainant must show that it has rights in a trademark is the time
of registration of the domain name or the time of the filing of the
Complaint. See Abt Electronics, Inc. v. Motherboards.com,
NAF Case No. FA0312000221239; Travant Solutions, Inc. v. Cole,
NAF Case No. FA 203177; Phoenix Mortgage Corp. v. Toggas, WIPO
Case No. D2001-0101; Razorbox, Inc. v. Skjodt, NAF Case NO. FA
150795; Iogen Corp. v. IOGEN, WIPO Case No. D2003-0544; Chiappetta
v. Morales, WIPO Case No. D2002-1103; Ode v. Intership Ltd.,
WIPO Case No. D2001-0074; Digital Vision,
Ltd. v. Advanced Chemill Sys., WIPO Case No. D2001-0827; Firstgate
Internet A.G. v. Soung, WIPO Case No. D2000-1311; eGalaxy Multimedia
Inc v. T1, NAF Case No. FA 101823; Roberta Chiappetta dba Discount
Hydroponics v. C. J. Morales, WIPO Case No. D2002-1103.
The rationale for the divergent
views was explained in Joe Cole v. Dave Skipper, WIPO Case No.
D2003-0843, as follows:
âThere are a large
number of decisions in which a complaint that relied upon a trade mark
that post-dated registration of the relevant domain name has failed.
These include Mr. Severiano Ballesteros Sota, Fairway, S.A. and Amen
Corner S.A. v. Patrick Waldron, WIPO Case No. D2001-0351. Where
in the Policy is the rationale for this approach to be found? One possibility
is that the words âat the time of registrationâ are to be implied
at the end of paragraph 4(a)(i); i.e. to say that the relevant trade
mark rights must exist at the time that the domain name is registered.
Another approach is to accept that there is no such time restraint in
paragraph 4(a)(i), but to say that the fact that a trade mark did not
exist at the time of the domain nameâs registration is a factor to
be taken into account on the issue of bad faith. The latter approach
is one that has been followed in a number of UDRP cases including, for
example, the recent decision of MADRID 2012, S.A v Scott Martin-MadridMan
Websites, WIPO Case No. D2003-0598â.
Many of the cases favouring
the former approach appear to proceed on the assumption that bad faith
is impossible unless the mark preceded the domain name. This Panel prefers
the view expressed by the learned panelist in ExecuJet Holdings Ltd.
v. Air Alpha America, Inc., WIPO Case No. D2002-0669 (October 7,
2002):
âFor the purposes
of the Policy, a domain name registration can have been undertaken in
bad faith even if the trade marks rights at which such bad faith was
directed arose after the registration of the domain name. This might
be the case where a registrant speculated on an impending merger between
companies that would create a new name combining in whole or in part
the names of the merger partners. Another example concerns the situation
where a registrant based its registration of the domain name on its
insider knowledge of the intentions of a (former) business partner or
employer in relation to the latterâs development of a new trademark.
From the intent of the Policy, it is clearly irrelevant whether a registrant
intended to abuse an existing trademark right or one which that registrant
specifically knew would ariseâ.
This Panel takes the view
that if a Complainant has registered a trademark or otherwise established
trademark rights prior to the filing of the Complaint, and the domain
name is found to be identical or confusingly similar to the mark, then
the relatively low threshold requirements of paragraph 4 (a)(i) of the
Policy are met. The mark may be a geographical indication but if it
is a registered or common law trademark, there are trademark rights
for the purpose of paragraph 4 (a)(i) of the Policy.
Accordingly the Panel finds
that Complainant has rights in the marks of which it was assignee or
licensee at the time it filed the Complaint.
B.Identical or Confusingly
Similar
Many cases have established
that âessentialâ or âvirtualâ identity is sufficient for the
purposes of the Policy: The Stanley Works and Stanley Logistics Inc.
v. Camp Creek Co., Inc., WIPO Case No.D2000-0113, Nokia Corporation
v. Nokiagirls.com a.k.a IBCC, WIPOCase No.D2000-0102; America
Online, Inc. v. Anson Chan, WIPO Case No.D2001-0004; Disney Enterprises,
Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case
No. D2001-0489; Komatsu Ltd. and Komatsu America International Company
v. RKWeb Ltd., WIPO Case No. D2000-0995;
America Online, Inc. v. Andy Hind, WIPO Case No. D2001-0642 and
The Toronto-Dominion Bank v. Boris Karpachev, WIPO Case No. D2000-1571.
The âborrowedâ mark
âMEXICO and square designâ, No. 478857 and the marks âMEXICO and
designâ, Nos. 604142 and 698252 all have as their dominant feature
the capitalized word MEXICO. The Panel finds the disputed domain name
to be virtually identical to these marks. The Complainant has established
this element of its case with respect to these marks.
As to the marks EN EL CORAZON
DE MEXICO and the various word and design marks TIANGUIS TURISTICO MEXICO,
the Panel finds that the word MEXICO is not their dominant feature and
the disputed domain name is not identical to any of them. The
similarity evaluation is made purely on a comparison between the trademark
and the alphanumeric string which makes up the domain name:
KeyCorp v. BruceBolton.com, WIPO Case No. D2004-0234, applying earlier
cases. For the same reason, the Panel finds the disputed domain
name is not confusingly similar to any of those marks. Complainant has
not established this element of its case with respect to those marks.
C.Rights or Legitimate
Interests
On the material before
the Panel, the Panel finds that Respondent registered <mexico.com>
based upon the sense of MEXICO as a geographic name, not upon any trademark
sense. Respondent has used the disputed domain name to operate
a web site providing a portal to access a global information network
featuring topics relating to Mexico, as Complainant admitted to the
USPTO in 2001. Accordingly, the Panel finds that Respondent is and since
1997, has been making a fair and bona fide use of the domain name and
thus has a legitimate interest in it.
Complainant has failed
to establish this element of its case.
D.Registered and Used
in Bad Faith
Even assuming that the
word MEXICO was being used as a trademark by Complainantâs predecessor,
the Tourism Ministry of Mexico, it is inconceivable to the Panel that
Respondent selected the domain name <mexico.com> because of any
trademark sense of the word MEXICO, rather than because of its sense
as the name of a country. That precludes a finding of bad faith
registration. Furthermore, there is no indication that Respondent
has used the disputed domain name in a manner related to its trademark
sense rather than its geographic sense. Even if Respondent did offer
it for sale to Complainant as alleged in the Complaint (five years after
registration), the context of that offer makes clear that the value
of the domain name derived from its geographic rather than its trademark
sense.
Accordingly the Panel is
not satisfied that the domain name was registered primarily for the
purpose of selling, renting or otherwise transferring the registration
to Complainant or to a competitor of Complainant; to prevent Complainant
from reflecting a mark in a corresponding domain name nor primarily
for the purpose of disrupting the business of a competitor.
Nor is the Panel satisfied
that Respondent, by using the disputed domain name, has intentionally
attempted to attract, for commercial gain, Internet users to its website
or other on-line location, by creating a likelihood of confusion with
Complainantâs mark as to the source, sponsorship, affiliation or endorsement
of Respondentâs web site or location or of a product or service on
its web site or location. In this regard, Complainant has not
persuaded the Panel that Internet users, typing the word MEXICO into
their browsers, expect to find the goods or services of Complainant,
as distinct from goods, services or information about the country Mexico.
Nor is the Panel satisfied
that there are any other circumstances evidencing bad faith registration
or use on the part of Respondent.
Complainant has failed
to establish this element of its case.
E.Reverse
Domain Name Hijacking
The Complaint having failed,
the Panel has regard to the Rules, paragraph 15(e):
âIf 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 and abuse of the Administrative Proceeding.â
Reverse Domain Name Hijacking
is defined in the Rules, paragraph 1 as âusing the Policy in bad faith
to attempt to deprive a registered domain name holder of a domain name.â
To prevail on such a claim, a respondent must show either that the complainant
knew of the respondentâs unassailable right or legitimate interest
in the disputed domain name or the clear lack of bad faith registration
and use, and nevertheless brought the Complaint in bad faith: Sydney
Opera House Trust v. Trilynx Pty. Ltd., WIPO Case No. D2000-1224
and Goldline International, Inc. v. Gold Line,
WIPO Case No. D2000-1151 or that the Complaint was brought in knowing
disregard of the likelihood that the respondent possessed legitimate
interests: Smart Design LLC v. Hughes, WIPO Case No. D2000-0993;
or that the complainant knew it had no rights in the trademark or service
mark upon which it relied and nevertheless brought the Complaint in
bad faith: Dan Zuckerman v. Vincent Peeris, WIPO Case No. DBIZ2002-00245;
HER MAJESTY THE QUEEN, in right of her Government in New Zealand, as
Trustee for the Citizens, Organisations and State of New Zealand, acting
by and through the Honourable Jim Sutton, the Associate Minister of
Foreign Affairs and Trade v. Virtual Countries, Inc.,
WIPO Case No. D2002-0754.
Here there are two grounds
for a finding of Reverse Domain Name Hijacking. First, the Panel
considers that Complainantâs submission in 2001 to the USPTO constitutes
an acknowledgement both of Respondentâs legitimate interest in the
disputed domain name and that the disputed domain name was not registered
and is not being used in bad faith.
Second, by majority, with
Mr. Moreno-Torres dissenting, the Panel finds that Complainant acted
in bad faith by relying on a mark borrowed for the purpose of improving
its position in these proceedings.
Accordingly the Panel finds
this to be a case of Reverse Domain Name Hijacking.
7.Decision
For all the foregoing reasons,
the Complaint is denied and the Panel declares that the Complaint was
brought in bad faith and constitutes an abuse of the Administrative
Proceeding.
______________________
Alan L. Limbury
Presiding Panelist
______________________
Manuel Moreno-Torres
Panelist
______________________
David E. Sorkin
Panelist
Dated: July
19, 2004
page
page
- file type: doc
- file time: 2009-11-20
- Direct Download
-
hot pdf files:
- MLURI SEMINAR SERIES 1997
- SCOPE:
- LAND SALE AGREEMENT
- Second General Meeting of the
- NEWARK PUBLIC SCHOOLS
- www.iandrinstitute.org
- Assignment 5
- External Audit: Recommendation Update:
- Virginia Emergency Response Team (VERT)
- Department of Design, Manufacturing and Engineering Management
- Fourteenth International Symposium on Advances in Geographic ...
- DRS
- Employer information
- Cervical Cancer Screening
- もみじ借換専用住宅ローン(中総信保証)
- TO:
- www.unfpa.org
- Use of the Income Approach in Valuing a Sand and Gravel Property in a ...
- WELCOMING REMARKS
- 35th Audit Committee Minutes
Direct Download
- Hot Searches