WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Parfarm, S.A. v. Braco International, S.A. de C.V.

Case No. D2003-0080

 

1. The Parties

The Complainant is Parfarm, Colonia Alamos, Mexico, represented by Jesús Hernández Chávez of Mexico.

The Respondent is Braco International, S.A. de C.V., C/O Bravo Berentsen, Mauricio, Laboratorios Brovel, S.A. de C.V., Estado de México, Mexico.

 

2. The Domain Name and Registrar

The disputed domain name<parfarm.com> is registered with Network Solutions, Inc. Registrar.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 3, 2003. On February 6, 2003, the Center transmitted by email to Network Solutions, Inc. Registrar a request for registrar verification in connection with the domain name at issue. On February 7, 2003, Network Solutions, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 13, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was March 5, 2003. The Response was filed with the Center on March 5, 2003.

The Center appointed Kiyoshi I. Tsuru as the Sole Panelist in this matter on March 12, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

The trademark PARFARM has been registered in Mexico by Complainant on October 26, 1968. The said registration, which has been duly renewed before the Mexican Institute of Industrial Property, grants Complainant the exclusive right to use such trademark as of April 22, 1968.

The disputed domain name was registered by Respondent on September 28, 1999.

 

5. Partiesí Contentions

A. Complainant

Confusing Similarity

Complainant argues that the domain name <parfarm.com> is identical to its registered trademark PARFARM, except for the top-level domain name marker "com"; that the said gTLD is not a distinctive element but just the superior level of a domain name identifier.

Respondentís lack of rights or legitimate interests in respect of the domain name

Complainant asserts that it has the exclusive right to use the trademark PARFARM in any form of letter or type of print, and that Respondent has no rights to the said trademark.

Bad faith registration and use

Complainant states that the disputed domain name resolves to a Web site located at "www.tornel.com," which is the site of a competitor of Complainant, i.e., Laboratorios Tornel, S.A.

Complainant also argues that its commercial activities have been seriously disturbed due to the confusion generated within Complainantís clients; that such clients may think that a possible merger or acquisition had taken place, involving Complainantís business and its competition.

Complainant continues by saying that the foregoing situation has generated several expenses in an effort to provide its clients with explanations regarding this issue.

B. Respondent

Confusing Similarity

Respondent states that according to domestic (Mexican) and international intellectual property law, only trademarks that are properly registered can be deemed as reserved or protected outside its domestic country. In this case, as stated by the Complainant, PARFARM is a registered trademark only in Mexico and the effects of such registration are limited to the country and also to the specific products or services covered by the same.

Respondent also argues that in light of Complainantís lack of registration of PARFARM within the period of time (6 months) established by the Paris Convention for the Protection of Industrial Property in any other country that is party of such treaty, it can be concluded that Complainant does not have any right (i) over the domain name in dispute, (ii) over the PARFARM trademark outside Mexico and (iii) over the PARFARM trademark inside Mexico, for products and/or services other than the ones specifically registered and granted by the appropriate authorities (classes 1, 3 and 5, that is, pharmaceutical, veterinarian and hygienic products for medical use).

In Respondentís view, the disputed domain name is not identical to the Complainantís registered trademark because (i) it is clearly identified and used as an internet address and not a trademark, and (ii) the PARFARM trademark registered by the Complainant is aimed, exclusively, to Mexican territory, while the domain in dispute is clearly an international/worldwide address not linked to any specific country. If arguments like the one sought by Complainant had merits, trademarks like "Coca Cola," "Dr. Pepper" or "Havana Club" would have never existed, due to the previous existence or use somewhere of a trademark or commercial name bearing such words.

Respondentís rights or legitimate interests in respect of the domain name

Respondent alleges that Complainant does not have any right over the PARFARM word, other than the trademark protection that was obtained for use inside Mexico and exclusively with respect to three "classes" of products and/or services.

According to Respondent, the disputed domain name is international and its use was obtained outside Mexico. Respondent states that such domain is not aimed exclusively for the Mexican territory or market; that the disputed domain name does not integrate the letters "mx" at its end, as most of the Mexican companiesí domains in the Web do.

Respondent asserts that he does not need to obtain any authorization from Complainant in order to use <parfarm.com> as a domain name, that Respondentís legitimate right over the domain derives from its acquisition/registration since September 28, 1999, and its compliance with the agreement executed with Network Solutions, Inc. since such date. Respondent argues that it has never used the word "parfarm" as a trademark or trade name in Mexican territory.

Bad faith registration and use

Respondent asserts that it has never approached anybody, including Complainant, seeking to obtain profits from the transfer of the disputed domain name.

Respondent argues that it has, instead, maintained the disputed domain name as part of an integral commercial plan in the agricultural sector, which will be aimed at farm owners.

Respondent claims to be the registrant of several domain names such as <alebrige.com>, <parfarm.com> and <tornel.com>, which Respondent claims to use and/or allegedly plans to use commercially.

Respondent argues that it is not a parent, subsidiary nor affiliate corporation of Laboratorios Tornel, S.A., but that it is engaged in a commercial relationship with this company and Semillas Beretnsen, S.A. de C.V.

Respondent states that the idea of using the domain name "www.parfarm.com" comes from abbreviating Panamerican Farm Products which will be the name of the joint venture between Respondent and the two above mentioned companies; that such a joint venture would have operations within the Middle East, Caribbean, and Central and Southern American markets.

Respondent alleges that that the temporal link of the disputed domain name <parfarm.com> to "www.tornel.com" was a programming error of Respondent that has been duly corrected.

Respondent also argues that Complainant has not submitted any evidence showing the existence of a "serious disturbance" generated within its clients. Respondent claims to have registered the disputed domain name without knowing of any problem caused to third parties, derived from its use.

In the opinion of Respondent, Complainant has not proved the existence of the alleged expenses generated by the use of the disputed domain name by Respondent, and that it would seem extremely unlikely that Complainantís clients had been confused by this international domain while (i) Complainant has not even established any internet facility to attend such clients and (ii) Respondent has never used the trademark registered by Complainant within Mexican territory.

Respondent asserts that Complainant has recently realized the convenience of setting up a Web page of its own, trying to undermine Respondentís lawful rights over its domain name acquired several years ago, claiming some sort of international trademark protection that, as evidenced before, does not exist.

Respondent points out that the domain name <parfarm.com.mx> is not registered by Respondent and suggests that such a name would be more adequate for Complainant given the fact that its commercial operations are circumscribed mainly within the Mexican territory and that Complainant has not provided any proof of a global operation that would merit the cancellation of registration of Respondent and transfer in Complainantís favor of the domain name in dispute.

 

6. Discussion and Findings

In accordance with the Policy, Paragraph 4(a), the Complainant must prove that:

"(i) the domain name in question is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name, and

(iii) the domain name has been registered and is being used in bad faith."

In the administrative proceeding, the Complainant must prove that each three of these elements are present.

A. Identical or Confusingly Similar

Complainant has proved that it has rights to the trademark PARFARM. Under Mexican law, the exclusive right to use a trademark derives from its registration. Complainant has submitted evidence of a valid trademark registration obtained in 1968, and renewed in October 1993.

Respondentís allegations regarding Complainantís lack of registration of the trademark PARFARM internationally have no significance in this procedure. The Policy does not require that Complainantís mark be registered internationally; it clearly sets forth the requirement that Complainant has rights to a trademark, as is the case here. This requirement has been met by showing the existence of a valid trademark registration in Mexico.

Respondentís interpretation of the Paris Convention is not precise. This international instrument does not oblige Complainant to obtain trademark registrations in every Member State, within the six-month priority period granted therein. This period is intended to be a benefit to applicants, not the other way around, and certainly not a constraint to force such applicants to file trademark applications around the world.

The fact that Complainantís trademark covers products from international classes 1, 3 and 5 is also without significance to this proceeding. The Policy requires that Complainant shows rights to a trademark, not coverage of such trademark rights regarding every available class.

This Panel finds that the disputed domain name <parfarm.com> is identical to Complainantís registered trademark PARFARM. The only discrepancy between the former and the latter, i.e., the addition of the generic top-level domain (gTLD) ".com" to the contested domain name is without legal significance. See CBS Broadcasting Inc. v. Worldwide Webs, Inc., WIPO Case No. D2000-0834, (September 4, 2000). See also Ahmanson Land Company v. Vince Curtis, WIPO Case No. D2000-0859, (December 4, 2000) (citing in turn Monty and Pat Roberts, Inc. v. J. Bartell, WIPO Case No. D2000-0300, [June 13, 2000]; J.P. Morgan v. Resource Marketing, WIPO Case No. D2000-0035, [March 23, 2000]).

Numerous Policy decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. See for example the following decisions: The Nasdaq Stock Market, Inc. v. Green Angel, WIPO Case No. D2001-1010 (September 30, 2001), (citing in turn Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing & Logistics Corp., WIPO Case No. D2000-0464 (July 27, 2000); The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113 (April 13, 2000); World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306 (January 24, 2001); Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615 (August 27, 2002); Compagnie Générale des Etablissement MICHELIN v. Lost in Space, SA, WIPO Case No. D2002-0504 (August 1, 2002); Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (November 6, 2001); Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525 (January 29, 2001)).

Thus, Complainant has shown that it has rights to the trademark PARFARM and that the disputed domain name <parfarm.com> is identical to such trademark. Therefore, Complainant has complied with the first requirement of the Policy.

B. Rights or Legitimate Interests

Complainant has argued that it has not authorized Respondent to use its trademark PARFARM. Respondent has not contested this fact. Respondent alleges that it need not obtain such an authorization, because the registration of the disputed domain name grants Respondent legitimate rights over the said name. This is not precise. The Policy establishes some examples of circumstances of circumstances that may be invoked as evidence of legitimate rights to a domain name:

"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue." (Policy, Paragraph 4c).

Respondent has not submitted evidence showing that any of these circumstances are present.

Notwithstanding the fact that Respondent claims to have maintained the disputed domain name since 1999, as part of an integral commercial plan in the agricultural sector, aimed at farm owners, Respondent has provided no evidence to support this allegation.

Respondentís argument that the disputed domain name does not have a ".mx" country- code suffix and that it therefore does not conflict with a local Mexican company, is irrelevant. Mexican companies are not constrained to the ".mx" name space. This Panel sees no reason why Complainant should limit itself to the ".mx" realm.

In light of the above, this Panel concludes that Respondent has no legitimate rights or interests to the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy establishes circumstances that, without limitation, constitute 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; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."

Complainant has shown that the disputed domain name resolved to the Web site of Complainantís competitor. This Panel does not find credible Respondentís argument that "www.parfarm.com" is the abbreviation of the joint venture to be named Panamerican Farm Products, especially taking into account that one of the companies which was supposed to become a part of such a joint venture was precisely Complainantís competitor, i.e. Laboratorios Tornel, S.A. See The Nasdaq Stock Market, Inc., v. Hamid Reza Mohammad Pouran, WIPO Case No. D2002-0770, (October 16, 2002).

Respondentís argument that the disputed domain name resolved to the Web site of Complainantís competitor is not credible either. Directing Internet users who are looking for Complainant, to one Web page that displays contents originated from Complainantís competition is not likely to be the result of a programming error or a coincidence.

In fact, this conduct constitutes one of the circumstances set forth in Paragraph 4b)iv) of the Policy: intentionally attempting to attract, for commercial gain, Internet users to another on-line location (in this case, to the site of a competitor of the Complainant), by creating a likelihood of confusion with Complainantís mark as to the source, affiliation or endorsement of the site.

Based on the foregoing analysis, the Administrative Panel concludes that the Complainant has provided sufficiently evidence that Respondentís registration and use of the domain name <parfarm.com> are in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <parfarm.com> be transferred to the Complainant.

 


 

Kiyoshi I. Tsuru
Sole Panelist

Dated: April 1, 2003