WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Baby Creysi Of America, Inc., Baby Creysi, S.A. de C.V., Creysi Bodega, S.A. de C.V. and Messrs. Cohen Hamui Simon and Cohen Hamui Abraham v. Asesoria en Computo Integral and Mesrs. Flores Gomez José Alonso Byrd Nery Aida Star, Ruiz Jaimez Javier and Perez Parente Martha Adriana
Case No. D2000-0237
1. The Parties
The complainants are:
- Baby Creysi of America, Inc., a corporation incorporated under the laws of the State of California, United States of America, having its principal place of business in San Diego, California, United States of America;
- Baby Creysi, S.A. de C.V., a corporation organized under the laws of Mexico; Creysi Bodega, S.A. de C.V., a corporation organized under the laws of Mexico; and
- Messrs Simon Cohen Hamui and Abraham Cohen Hamui, Mexican individuals.
The respondents are:
- Asesoría en Cómputo Integral, an allegedly irregular corporation organized under the laws of Mexico; and
- Messrs. José Alonso Flores Gómez, Aida Star Byrd Nery, Javier Ruiz Jiménez and Martha Adriana Pérez Parente, all Mexican individuals.
2. The Domain Name and Registrar
The Domain Names that are the subject of this complaint are:
The two above listed domain names were registered with Network Solutions, Inc., of 505 Huntmar Park Drive, Herndon, Virginia 20170, United States of America, respectively on January 15, 2000 and February 27, 2000.
Registrant in both cases was Asesoría en Cómputo Integral, from México D.F., México.
3. Procedural History
A Complaint made pursuant to the Uniform Domain Name Dispute Resolution Policy implemented by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999 ("Uniform Policy" or "The Policy"), and under the Rules for Uniform Domain Name Dispute Resolution Policy implemented by ICANN on the same date ("Uniform Rules"), was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center")on March 31, 2000.
A paper original of the Complaint together with all relevant annexes was sent by courier under cover letter of the same date and received by the WIPO Center on April 3, 2000. An acknowledgement of receipt was sent by the WIPO Center to the Complainant, by facsimile and e-mail dated April 3, 2000.
On April 3, 2000 the WIPO Center transmitted via e-mail to Network Solutions, Inc. a request for Registrar verification in connection with this case. On the same date, i.e. April 3, 2000, the Registrar confirmed by e-mail to the WIPO Center having received a copy of the Complaint and the fact that the Respondent, Asesoría en Cómputo Integral was the registrant of the two domain names at issue, that the two names were "active" and that the contact for both Administrative and Billing purposes was Mr. José Alonso Flores Gómez, providing his street and e-mail addresses.
On April 5, 2000 the WIPO Center sent by e-mail to Complainant inquiries concerning fulfillment of administrative requirements. These inquiries were responded satisfactorily by e-mail on April 6, 2000, by Complainant
On April 6, 2000, Complainant sent by e-mail to the WIPO Center, with a confirmation by hard copy which was received by the Center on April 10, an amendment to the Complaint in relation to Paragraph.4(b)(i) of the Policy and 3(b)(x) of the Rules, "Remedies Requested" and in relation to Paragraph 3(b)(xii) of the Rules and Paragraph 4(b) of the Supplemental Rules, "Communications".
Notification to Respondent
Having verified that the Complaint satisfied the formal requirements of the Uniform Policy and Uniform Rules, the WIPO Center issued to the Respondent on April 11, 2000, a Notification of Complaint and Commencement of Administrative Proceedings (including a copy of the filed Complaint), to both the postal and e-mail address of the Respondent and to the the facsimile of the Respondent's Contact, as provided by the Registrar. Copies of this Notification of Complaint were sent to the Complainant, the Registrar and ICANN on the same date.
On April 15, 2000, the WIPO Center received an e-mail by the Respondent requesting to receive the "information", presumably related to the Complaint, in Spanish. On April 20, 2000, the WIPO Center informed Respondent on the impossibility to comply with his request pursuant to Paragraph 11 of the ICANN Rules in relation to languages of documents.
Having received no response from the Respondent within the specified time in the Notification of Complaint, on May 2, 2000, the WIPO Center issued to both parties a Notification of Respondent Default.
On May 8, 2000, the WIPO Center issued to both parties a Notification of Appointment of Administrative Panel and Projected Decision Date. This notification informed the parties that the Administrative Panel would be comprised of a single Panelist, Mr. Marino Porzio.
4. Factual Background
Complainant have demonstrated to be the legal owners, among others, each of the following trademarks, as well as owners of the rights listed below:
(i) Baby Creysi of America, Inc. is the owner of:
- U.S. registered Trademarks No. 1476928 "BABY CREYSI" (AND DESIGN); 2,197,439 "CREYSI".
- Canadian registered Trademark No. 344400 "BABY CREYSI"(AND DESIGN).
- Mexican registered Trademarks/Service Marks No. 310493 "BABY CREYSI"; No. 310963 "BABY CREYSI"; No. 311101 "BABY CREYSI"; No. 311102 "BABY CREYSI"; No. 312102 "BABY CREYSI"; No. 312271 "BABY CREYSI"; No. 382384 "BABY CREYSI"; No. 540645 "BABY CREYSI" and No. 575820 "BABY CREYSI" (AND DESIGN).
- This Corporation also owns trademark registrations No. 043098 "BABY CREYSI" from Peru; No. 85051 "BABY CREYSI" from Panama and No. 1723165 "BABY CREYSI" from Argentina.
(ii) BABY CREYSI, S.A. DE C.V. has the following rights:
- This Corporation is the authorized licensee of BABY CREYSI OF AMERICA, INC., in respect of all the Mexican registered trademarks listed under sub-paragraph (i) above.
- In addition, this Mexican Corporation has proved to have been engaged, during more than two decades, in the manufacture, advertisement, distribution, commercialization and exportation of products bearing the marks "BABY CREYSI", " in Mexico.
(iii) Messrs. Simón Cohen Hamui and Abraham Cohen Hamui are the joint owners of the Mexican commercial slogan registration No. 10171 "CREYSI BODEGA"; Mexican Service Mark registration No. 619751 "CREYSI BODEGA".
5. Parties’ contentions
Complainants contend that the Domain Names at issue are identical to Complainants’ registered trademarks, that Respondent has no rights or legitimate interests in respect of the Domain Names, and that such Domain Names were registered and used in bad faith.
Consequently, Complainants require the transfer of the Domain Names to Complainants, in the manner specified in the Complaint and in the Amendment to the Complaint.
Respondent has not contested the allegations of the Complaint.
6. Discussions 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."
Paragraph 4(a) of the Policy provides that the complainant must prove each of the following:
1) that the domain name registered is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
2) that the registrant of the domain name at issue has no rights or legitimate interests in respect of the domain name; and
3) that the domain name at issue has been registered and is being used in bad faith.
It is absolutely clear for anybody and the Panel so believes that the domain names <babycreysi.com> and <creysibodega.com> are identical to the trademarks and service marks registered and used by Complainants. It is also apparent that the Respondent has no rights or legitimate interests in respect of the domain name.
It is also evident that the two domain names at issue were registered by respondent in bad faith and for the purpose of "selling ...or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration...", as provided for in Paragraph 4(b)(i) of the Policy. In fact, Respondent sent an e-mail to Complainant on February 7, 2000, offering the services of his firm and this e-mail was followed by another one, on the same date, sent by another agent of Respondent, whereby this agent offered to Complainants the transfer of the domain name <babycreysi.com> for US$10,000.- in the case Complainants were not interested in contracting the computing services of Respondent. Moreover, when Respondent probably realized the impossibility of obtaining payment of the sum requested from Complainants, Respondent publicly announced in their Web page as "Domain for Sale", one of the Domain Names at issue, namely <babycreysi.com> for the price of US$50,000.-
The above facts supported by evidence filed with the Complaint, have persuaded the Panel of the bad faith of Respondent when registering the Domain Names at issue.
However, the name must not only be registered in bad faith, but it must also be used in bad faith. The issue to be determined is whether Respondent actually used the domain name in bad faith. In this respect Paragraph 4(b) of the Policy, provides that "For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name".
As analyzed in the above paragraphs the circumstances described in the Paragraph 4(b)(i) of the Policy, which constitute evidence of registration or use in bad faith, are present in this case and thus the Panel can conclude that Respondent, in addition to registering the domain names at issue in bad faith, has also used these domain names in bad faith.
The Administrative Panel decides that the Complainant has proven each of the three elements provided for in Paragraph 4(a) of the Uniform Policy. Accordingly, the Administrative Panel requires that domain name <babycreysi.com> be transferred to Complainant Baby Creysi of America, Inc. and Domain Name <creysibodega.com> be jointly transferred to Complainants Messrs. Simón Cohen Hamui and Abraham Cohen Hamui.
Dated: May 22, 2000