WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Grupo Financiero Inbursa, S.A. de C.V. v. Alejandro Delgado-Ayala
Case No. D2001-0172
1. The Parties
The complainant is Grupo Financiero Inbursa, S.A. de C.V. a Mexican corporation, addressed at Av. Insurgentes Sur 3500, Col. Peña Pobre, C.P. 14060, Mexico, D.F., Mexico (the "Complainant"), represented in this proceeding by Mr. Juan Carlos Soriano R., of Mexico, D.F., Mexico.
The respondent is Mr. Alejandro Delgado-Ayala, with an address at 956 Baines St., East Palo Alto, CA 94303, USA. (the "Respondent").
2. Domain Name and Registrar
The domain name at issue is <inbursa.com>, registered with Network Solutions, Inc., of Herndon, Virginia, USA (the "Registrar").
3. Procedural History
On January 31, 2001 the Center received via E-mail a Complaint in accordance with the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, (the "Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). On February 5, 2001 the Complaint was received in hardcopy and the Center acknowledged receipt thereof.
At the Center’s request of February 5, 2001, the Registrar confirmed that the domain name at issue is registered with NSI, that Mr. Alejandro Delgado-Ayala is the registrant with an address at 956 Baines St., East Palo Alto, CA 94303, USA, that the administrative and billing contact is Mr. Delgado-Ayala, that the technical contact is NSI, that NSI´s 5.0 Service Agreement is in effect and that the domain name is in active status.
At the Center's Notification of Complaint Deficiency, Complainant replied by accordingly amending the Complaint.
The Panel, sharing the Center’s assessment of February 23, 2001, independently finds that the amended Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules, and that payment of the fees was properly made. On the same day, the Center sent to the Respondent a Notification of Complaint and Commencement of Administrative Proceeding. On March 7, 2001 the Center received the Response.
After having received Roberto A. Bianchi´s Statement of Acceptance and Declaration of Impartiality and Independence, on March 20, 2001 the Center appointed him as a sole panelist. The decision date was scheduled for April 2, 2001. Thus, the Administrative Panel finds that it has been properly constituted.
There were no other submissions of the Parties or any orders issued.
The registration agreement for the domain name at issue has been done and executed in English by Respondent-Registrant and the Registrar. The Parties’ submissions have been made in English. There being no special circumstances for the Panel to determine otherwise, as provided in Rules, Paragraph 11, the language of this proceeding is English.
4. Factual Background
The following facts and circumstances are established:
Complainant is a financial company based in Mexico. It owns following trademark registrations granted by the General Office of Technological Development of the Ministry of Commerce and Industrial Development in Mexico:
- Trademark Registration number 450596 for the name "INBURSA" covering services in international class 36, insurance and financing services, with legal date of January 19, 1994 and granted on January 20, 1994.
- Trademark Registration number 495180 for the name "INBURSA 20" covering services in international class 36, insurance and financing services, with legal date of May 17, 1995 and granted on June 19, 1995.
- Trademark Registration number 495179 for the name "INBURSA 20 GLOBAL" covering services in international class 36, insurance and financing services, with legal date of May 17, 1995 and granted on
June 19, 1995.
- Trademark Registration number 674305 for the name "INBURSA.COM.MEX" covering services in international class 36 covering web page services offering insurance and financing services. Application date: August 25, 2000.
Respondent registered the domain name at issue on April 7, 1999.
Pursuant to version 5 of the service agreement between NSI and Respondent, the Policy is in effect for the registrar and the registrant-Respondent, and may therefore be invoked by Complainant.
5. Parties’ Contentions
A. The Complainant contends that
The contested domain name is identical or confusingly similar to the INBURSA marks of the Complainant.
Respondent has no rights or legitimate interests in the domain name. It does not own a corresponding trademark. There is no evidence of the registrant's use or demonstrable preparations to use the domain name in connection with a bona fide use since the web site has been "under construction" since the registration (at least until
January 10, 2001). Respondent is not commonly known by the domain name, nor has offered any kind of products or services by means of the domain name. Respondent has no relationship with Complainant, and is not a licensee of Complainant.
Respondent has registered the domain name in bad faith. When Complainant noticed the existence of the domain name, it tried to contact the domain name holder
Mr. Delgado-Ayala to warn him that the registration was an infringement of the marks of the Complainant and to request the transfer of the domain name to Complainant, but the address given by registrant-respondent at 57E Escondido Village, Stanford, California 94305, USA appeared not to belong to Respondent. The telephone number given by registrant-respondent is not in service.
The domain name should be considered as having been registered and used in bad faith because it is not in use for any business or private matters; there is no online presence or a website. The domain name indicates no reference to the Respondent. In the current case the passive holding of the domain name <inbursa.com> constitutes bad faith.
B. Respondent contends that:
The Complainant brings no evidence as to the commercial presence, banking activity or marketing campaign in California or in the U.S. so as to make it a known trademark in said territories. Complainant had no Internet presence at the time the Respondent registered the same. Complainant does not prove its saying that the Respondent could not ignore the existence of the Complainant and of its trademarks. Respondent does not agree that the use of the domain name for identical services would necessarily infringe its alleged trademark rights on a worldwide basis.
The Respondent has not infringed the complainant´s alleged trademark rights as it has not offered any identical services that would generate confusion in the Mexican market. Respondent's intended use of the domain name Inbursa.com is not to offer identical or competitive services of the alleged class 36 –financial services. The offering of a site for the liquidation of inventory is in no way a financial intermediation of credit or investment. Respondent’s intended use of the domain in dispute is not in conflict with the Complainant’s alleged trademark rights even if the use of the domain Inbursa.com were to have impact in the Mexican territory. The trademark protection is not universal nor horizontal for all activities in trade, commerce and services.
Paragraph 4(c) of the Policy provides the grounds for evidencing the right or legitimate interest by the Respondent. Paragraph 4(c)(i) states that such right or legitimate interest is perfected if prior to the notice by the Respondent of the dispute, there have been "demonstrable preparations to use" the domain name in connection with a bona fide offering of goods or services. Respondent has made substantial preparations for the use of said domain name. The mere preparation of the Business Plan has taken not less than six months of research and writing. Likewise, the development of the software has entailed substantial expenses for the Respondent. The unfortunate fact that the lack of financial resources have made it impossible for the Respondent to rollout the business plan and have a complete and sustainable transaction engine should not bar it from having and keeping a legitimate interest in the domain name in dispute. All Respondent's efforts and preparations to use the domain name Inbursa.com have been prior to Respondent's knowing of any dispute. Further evidence of that is the fact that Respondent registered the names <imbursa.com> and <imbursa.net> last
January 9, 2001, before the Respondent knew of the existence of any dispute. This was done with the object of protecting the future worldwide use of our domain <inbursa.com>. Some e-mail communications evidence some of the efforts done for the financing of our venture, all being dated before the filing of the complaint.
The evidence provided by the Respondent clearly suggests that there have been fair preparations to use the domain name Inbursa.com in the offering of bona fide services. Conversely, the Complainant has not made its case as to the lack of the right of or legitimate interest in the domain name by the Respondent (See, Infospace.com Inc. v. Infospace Technology Co. Ltd., Case 2000/0074).
The Respondent is a Stanford University Alumni and was a resident at 57E Escondido Village using the telephone number 650 497-7439. When the domain name was registered the Respondent was residing at the address in question. Respondent never had any notice of said efforts notwithstanding the fact that he was residing in the address in question. In September of 2000, the Respondent moved out of Stanford and subsequently made the changes in the Network Solution’s "Whois" database.
The Complainant does not provide any allegations nor evidence to fit the present case into any of the grounds given by paragraph 4(b) of the Policy. The lack of use is not, in and of itself, evidence of bad faith. Likewise, no evidence of bad faith when registering is provided. Conversely, the Respondent fairly justifies its purposes for registration. Additionally, the Respondent has never engaged in a pattern of selling domain names or registering trademarks of others or disrupting the business of a competitor or even tried to create confusion with the Complainants trademark.
6. Discussion and Findings
The Parties have different countries of residence, which prevents the Panel to look to any particular domestic law in deciding the dispute. See WIPO Case D2000-0025 Société Générale de Surveillance, S.A. The Panel will thus exclusively apply the Policy and its Rules.
Identity of Confusing Similarity
Complainant has rights in the trademark INBURSA. Its registrations pre-date the domain name registration. The Panel finds that the domain name at issue is identical to Complainant´s mark INBURSA or, having in mind the addition of ".com", it is at least confusingly similar to such mark. Thus, Complainant has met its burden under Policy, Paragraph 4(a)(i).
Lack of Rights and Legitimate Interests
According with Rules, Paragraph 5(b)(i) and 5(b)(ix) Respondent generally carries the burden to specifically respond to the Complaint, and to present any documents in its favor. Under Policy, Paragraph 4(c) Respondent may allege and evidence any circumstance of rights or legitimate interests in the domain name.
In the instant case Respondent has contended that the reason for his selecting <inbursa.com> for a domain name was his project of developing a web site for auctions of second-hand equipment to be marketed through the Internet, aiming specially at the Latin-American markets where such equipment could be placed.
The full name of the enterprise would be Inventarios Bursatilizados. "Inventarios" in Spanish means "inventories". "Bursatilizados" is alleged by Respondent to mean "the placement of assets in the marketplace". This panelist, who has some experience and post-degree education in capital markets, must confess that he is not familiar with such a Spanish word. Although the Panel does not deny that such a word might be created as a neologism, one must bear in mind that its root "bursátil" is an adjective meaning "related to the stock market or securities market" in Spanish, that is to say, related to a market where shares and bonds are traded. It certainly does not mean a market where physical assets such as inventories of used hardware and/or obsolete equipment are directly traded . Respondent - as any other person - is certainly entitled to create any new word of its choice, and to maintain that INBURSA could be derived from parts of the terms "Inventarios" and "Bursatilizados". However the derived acronym sounds very strange at least in Spanish, and its derivation in this case as alleged by Respondent is therefore less than convincing . To the contrary this allegation is strongly suggestive of a conveniente and ad hoc explanation for the choice of the domain name.
Respondent has submitted 35 dias in PowerPoint format about a business plan. It certainly appears as a reasonably drafted business plan to be presented to potential investors such as the ones mentioned by Respondent in its response. However there is no external evidence (i. e. from a source different from Respondent itself) that such plan was ever presented to any investor whatsoever. The only evidence produced by Respondent are commentaries contained in e-mails originated by none of these alleged potential investors, but from Respondent itself or from its associates. In addition the business plan could very well be used with almost any of the other domain names also registered by Mr. Delgado-Ayala.
Nor is the "affidavit" from Mr. Luis Arellano, the alleged CEO of Innetvations, Inc., a software developing and Internet consulting firm, more convincing about the allegedly planned activities by Mr. Delgado-Ayala and his associates for the domain name <inbursa.com>.
In the first place, in Mr. Arellano´s document the requisites of an acceptable affidavit are missing. It has been submitted without a letterhead of the incorporated company, it has not been sworn and it is not notarized.
In the Süd-Chemie AG v. tonsil.com WIPO Case No. D2000-0376, July 3, 2000, the learned panelist, referring to a letter without letterhead submitted by the respondent, stated:
"This document should have been presented on the letterhead of Mr. Blasgen’s company, notarized, or in the form of an affidavit. Had this document been submitted in one of those forms, the Panel might have been inclined to accord it probative value. In its present form, pursuant to the authority conferred upon it by Rule 10(d), the Panel finds that this letter is without probative value, and that therefore Ms. Comito has not proven any use whatsoever of the domain name of her alleged website."
This panel accepts the Süd-Chemie AG reasoning in relation to an affidavit's formal requirements. In these ICANN proceedings there is simply no way for a panel to reasonably afford some weight to an affidavit lacking some basic external forms, such as notarization, sworn statement (Footnote 1), or a letterhead. There is an additional reason for requiring external formalities in an affidavit: in an ICANN proceeding a complainant normally ignores - at the moment of submitting its complaint - what kind of evidence a respondent is going to submit with its response. Additionally a complainant has normally no chance to comment on evidence submitted by a respondent, because the right to serve replies to a response is not automatically granted by a panel. Accordingly, a respondent should know that its evidence is normally not subject to objection by a complainant, and must take care that this evidence possess internal and external credibility.
In the second place, the "affidavit" by Mr. Arellano refers only to his firm having been hired by Respondent for the development and customized construction of an auction/liquidation website. There is no mention to the domain name at issue, and the statement is not supported by any receipt or any other evidence that Respondent has in fact paid any money to Mr. Arellano´s firm for its hired services. Had payment in fact occurred, such receipts should reasonably have been available to Respondent, and could therefore have been presented to the Panel in this proceeding. However Respondent has not submitted them.
Respondent also contends that he eventually could not develop the website because he lacked the money to do it, under the current market circumstances affecting dot com companies, but that he nevertheless undertook preparations in order to attract investors for the project. The Panel accepts that it may ultimately be true that market conditions have not allowed many entrepreneurs to develop their projects, but this possibility does not provide an answer to the obvious question as to why the website under the domain name at issue is without any use, except for the posting of an "under construction" legend by the registrar, almost two years after registration.
Mr. Javier Ergueta´s e-mails of August 18, 2000, March 9, 2000 and March 17, 2000 - also presented by Respondent - lack the mentioned basic requirements to be admitted as affidavits by this Panel. Additionally there is no evidence whatsoever that the projects apparently being the subject of conversations between Mr. Ergueta and prospective partners or investors do in any manner relate to a preparation of use for the domain name at issue.
Respondent contends to have spent substantial amounts of money in developing its software, but it has not evidenced having incurred in any expense in this proceeding.
In sum, this Panel finds that Respondent has not submitted sufficient evidence of "demonstrable preparations" to use the domain name under Policy, Paragraph 4(c)(i).
As no other circumstance that Respondent has rights or legitimate interests in the domain name has been alleged or evidenced, the Panel finds that Complainant has met its burden under Policy, Paragraph 4(a)(ii).
Bad Faith Registration
According with the result of a visit independently conducted by the Panel on March 26, 2001 to the NSI´s WHOIS database by the Panel, Respondent is also the registrant of the <invermex.com>, <ventamex.com>, <buymex.com>, <tuventa.com> and <venta.com> domain names.
This means that Respondent is familiar not only with the Spanish language, but also with Mexico - Complainant´s country - as the suffix "mex" in three domain names clearly shows. It is true that none of these domain names seems to particularly correspond to third parties´ marks, because of their apparent descriptive or common use nature. Thus, a pattern of conduct consisting of registering third parties´ marks does not appear to be present, which in turn does not allow to conclude that the bad faith registration circumstance of Policy, Paragraph 4(b)(ii) is present in its entirety.
However Respondent's familiarity with Mexico, together with the knowledge in Latin-American business shown by Respondent (as seen in the business plan presentation) is sufficient for this Panel to infer that Respondent has most likely known the existence of Complainant´s mark prior to the domain name registration, and that the disputed domain name registration was in bad faith, in that it prevented Complainant to reflect its trademark in a corresponding ".com" domain name.
Although Respondent is right that Complainant has not evidenced that its mark is internationally known in the field of financial services, the Panel notes that Respondent has not clearly denied, as he certainly could, that he knew Complainant´s mark at the moment of the domain name registration.
The Panel thus finds that the Complainant has met its burden under Policy, Paragraph 4(a)(iii), in that the domain name was registered in bad faith.
Use in Bad Faith
The website corresponding to the domain name at issue consists of an "under construction" page only, together with advertising messages of NSI (independently visited by the Panel on March 26, 2001).
Under the leading Telstra case (WIPO D2000-0003) inactivity may be construed as positive action in bad faith if relevant circumstances are present. This Panel accepts such reasoning. In the instant case the following circumstances are present:
a) Lack of use of the website for almost two years after the domain name registration (April 7, 1999) until this present moment.
b) Respondent - lacking rights and interests in the domain name - is most likely familiar with the Mexican financial market (as shown by its domain name registration of <invermex.com>), and therefore he most likely knows Complainant´s existence and activities at least in the Mexican financial market;
c) The permanence of the domain name registration and the existence of a "under construction" page as the sole contents of the site may lead Internet users to believe that Complainant does not own a web page, or that he is not technically able to maintain an active web site.
Together, the listed circumstances are relevant and lead the Panel to infer and to find that the domain name is being used in bad faith (Policy, Paragrph 4(a)(iii)).
The Panel has found that the domain name <inbursa.com> is identical or at least confusingly similar to the INBURSA service marks of the Complainant, and that the Respondent has no rights to, or legitimate interests in said domain name. The Panel has further found that the domain name has been registered in bad faith, and that it is being used in bad faith.
Therefore, pursuant to Policy, Paragraph 4(i), and Rules, Paragraph 15, the Administrative Panel requires that the registration of the domain name <inbursa.com> be transferred to the Complainant Grupo Financiero Inbursa, S.A. De C.V.
Roberto A. Bianchi
Dated: March 27, 2001
1. Sworn affidavits or statements were accepted by WIPO Panels in at least two cases . See The Wiggles Touring Pty Ltd v. Thompson Media Pty Ltd, Case No. D2000-0124, April 15, 2000, and Cellular One Group v. COI Cellular One, Inc., Case No. D 2000-1521, December 28, 2000.