WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Femsa Comercio, S.A. de C.V. v. Leon Klibansky
Case No. D2006-0577
1. The Parties
The Complainant is Femsa Comercio, S.A. de C.V, Monterrey, México, represented by Clarke, Modet & Co., Spain (hereinafter, the “Complainant”).
The Respondent is Leon Klibansky, Bussum, Netherlands (hereinafter, the “Respondent”).
2. The Domain Name and Registrar
The disputed domain name is <oxxo.com> (hereinafter, the “Domain Name”).
The Domain Name is registered with BulkRegister LLC (hereinafter, “Bulkregister.com”).
3. Procedural History
The Complainant filed its complaint (hereinafter, the “Complaint”) with the WIPO Arbitration and Mediation Center (hereinafter, the “Center”) on May 8, 2006. On May 9, 2006, the Center transmitted by email to BulkRegister.com a request for registrar verification in connection with the Domain Name. On May 10, 2006, BulkRegister.com transmitted by email to the Center its verification response confirming that the Respondent was 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 (hereinafter, the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter, the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter, 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 May 19, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was June 8, 2006. The Response was filed with the Center on June 8, 2006, by electronic means and on June 12, 2006, in its paper version.
On June 26, 2006, the Complainant made a supplemental filing, replying to some of the allegations made by the Respondent in the Response. The same day, the Center sent a notification to both parties indicating that, under the Policy, the Rules and the Supplemental Rules no such filing was foreseen, that it would be forwarded to the Panel and that the Panel will have sole discretion on whether to accept and or consider the filing.
A similar situation occurred on July 7, 2006, when the Respondent filed a document, supported by several schedules, replying to some of the arguments in the Complainant’s supplemental filing. On July 7, 2006, the Center sent an e-mail to the parties indicating that it would be forwarded to the Panel and that the Panel will have sole discretion on whether to accept and or consider the filing.
The Center appointed Mr. Albert Agustinoy Guilayn (hereinafter, the “Panel”) as the sole panelist in this matter on June 22, 2006. 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
A. The Complainant
The complainant is the largest manufacturer and distributor of beverages in Mexico, currently operating different ranges of activities. Among them, the Complainant has operated since 1978 one of the biggest networks of convenience stores in the American continent under the brand OXXO. At present there are more than 4,300 Oxxo stores employing more than 7,800 persons and generating an annual income of more than 20 billion US Dollars.
As a consequence of its success in Mexico, the Complainant has expanded its network of Oxxo stores to the United States of America and other American countries, consolidating this network as one of the most successful in the American continent.
As indicated above, the Complainant is the owner of numerous trademark registrations totally or partially based on the OXXO mark in many jurisdictions including Mexico, Brazil, Panama, Venezuela, Guatemala, Costa Rica, Chile or Nicaragua. Moreover, as a consequence of its international expansion it has also applied for the registration of an OXXO trademark in the United States of America and the European Union.
The Complainant has also a significant Internet presence by means of its corporate website, linked to the domain name <femsa.com> as well as by means of the website specifically directed to the Oxxo convenience store customers, linked to the domain name <oxxo.com.mx>.
B. The Respondent
The Respondent is a photographer, designer and art-director who provides, jointly with his son, web design and business consultancy in Amsterdam, Netherlands.
Moreover, according to the information provided in the Response, the Respondent is a specialist equestrian portrait photographer, having worked for advertising agencies on major brands. As a consequence of his interest and specialization in the field of equestrian sports, he founded and currently owns a retail gift store offering different types of horse and country apparel products.
C. The Domain Name
The Domain Name was registered by the Respondent on May 2, 2005. It is important to bear in mind that the Respondent was not the original registrant of the Domain Name, but the Respondent obtained it as a consequence of a bid made in the website of Snapnames, an online operator offering auction services for valuable domain names. According to the Response, the Respondent paid the amount of 1,160 US Dollars to obtain registration of the Domain Name.
At the time the Complaint was filed, the Domain Name was linked to a website including several links directing the Internet users to websites offering services or products linked to the Latin American market and, more specifically, to the Mexican market. This website was a free service provided by Bulkregister.com and, as indicated above, it included links to the websites of different competitors of the Complainant.
In addition, according to the documentation provided in the Complaint and the Response, since July 2005, the Domain Name was offered by the Defendant for sale in the website “www.sedo.com”, which offers specialized services for the commercialization of domain names.
Moreover, as indicated in the Response, on April 21, 2006, after having decided that the Domain Name was no longer of interest for the development of an art project, the Respondent sent to ten entities and persons who used the word “oxxo” in their names an email offering the Domain Name for sale. Thus, the Complainant received on that date an e-mail from the Respondent with the following text:
“Subject: OXXO.COM for Sale
OXXO.COM is coming for sale.
Att: Director of communications.
If you are interested in acquiring the domain name OXXO.COM please contact me as I am the owner and am intending to put this name for sale.
Look forward to hear from you.
The Complainant replied to the original e-mail from the Respondent on May 4, 2006. The Complainant’s e-mail included the following text:
“Subject: Re: OXXO.COM for Sale
We are interested in. How much are we talking about?”
On May 4, 2006, the Respondent sent a reply to that e-mail containing the following text:
“Subject: Re: OXXO.COM for Sale
Sorry, it might be too late for you. I have tried many times to mail you and tried to contact Femsa but without success. Only 1 hour ago I gave an option for 48 hours to a US firm for $ 22,000 What is your name and direct telephone number? Yours sincerely,
On May 5, 2006 the Complainant replied to the Respondent’s last e-mail as follows:
“Subject: Re: OXXO.COM for Sale
We are willing to make a better offer. How can we contact you for further actions?”
In the same day, the Respondent answered as follows:
“Subject: Re: OXXO.COM for Sale
Make your offer please.
You can contact me now on international dialing then tel: […] or my e-mail.
Please give your name. I do like like anninomus e-mails.
The Complainant did not contact the Respondent further. The Respondent sent a final e-mail message stating as follows:
“Subject: Re: OXXO.COM for Sale
Can you please respond to my e-mail TODAY and let me know if you wish to make a counter offer.
Leon Klibansky (owner of OXXO.COM)
Tel: direct line
The Complainant had previously contacted the Respondent by e-mail in order to negotiate an eventual transfer of the Domain Name. Here it appears the Complainant used a fake identify in order to avoid being identified by the Respondent. This negotiation was also unsuccessful. The Respondent did not accept Complainant’s final offer for an amount exceeding 7,000 US Dollars.
5. Parties’ Contentions
The Complainant contends in the Complaint that:
(i) It is the owner of numerous registrations in different jurisdictions of trademarks literally or partially based on the OXXO mark, which corresponds to the brand used by the Complainant in connection with its network of convenience stores. As a matter of fact, such a network has become one of the most successful in Mexico and it is currently expanding to other countries of the American continent;
(ii) The Respondent has no rights or legitimate interests in the Domain Name because he has neither been authorized to use the OXXO trademarks owned by the Complainant, nor has he made a non-commercial or fair use of the Domain Name, nor he has been commonly known by the Domain Name. The Complainant indicates that the Respondent linked the Domain Name to a website including links to numerous websites aimed at promoting or selling goods or services that compete with those offered by the Complainant. Moreover, the Respondent offered the Domain Name publicly for sale by means of a website specialized in this type of transaction. Finally, the Respondent did contact the Complainant directly along with other entities in order to sell the Domain Name at the highest price;
(iii) The Respondent registered the Domain Name in bad faith since he registered it on May 2, 2005, a date by which the OXXO trademarks were already well-known in Mexico and Latin America. Thus, the Complainant considers that it is inconceivable that the Respondent did not know of the Complainant’s trademarks. Such an impression is reinforced by the fact that the Respondent subsequently sent an e-mail to the Complainant’s corporate e-mail address, on April 21, 2006, offering the Domain Name for sale. In addition, having initiated a negotiation with the Complainant on the price for the transfer of the Domain Name, the Respondent asked for a price of 22,000 US Dollars –which was clearly speculative;
(iv) The Respondent has used the Domain Name in bad faith as, since its registration, the only use that has been made of it is its inclusion in the “www.sedo.com” website offering it for sale, as well as an active sales promotion carried out in order to contact potential clients, presumably including competitors of the Complainant. Moreover, numerous unsolicited e-mail messages offering the Domain Name for sale were sent to the Complainant and other entities and persons.
The Respondent contends in the Response that:
(i) He is a photographer, designer and art-director who has worked for years in the development of advertising projects as well as, more recently, in the development of Internet projects;
(ii) He became the registrant of the Domain Name by purchasing it at an auction that took place in the specialized website Snapnames on April 30, 2005, for his personal use in connection with a personal project and he was not aware at all of the Complainant’s existence when the Domain Name was registered;
(iii) There can be no confusion between the Complainant’s trademarks and the Domain Name since the Respondent has not presented it to the public or published a final logo using it. In this sense, Respondent only intended to publish the website using the Domain Name once research and development had been completed and the appropriate steps taken regarding a trademark in the Benelux office. Moreover, the Respondent considers that the name “Oxxo” is not unique to Complainant. In this respect, he indicates that it is commonly known that X or multiples of X represent kisses, that the word “Oxxo” is not to be found in the dictionary, that it is not a person’s name or a place and has no clear meaning at all;
(iv) There was no connection between the Domain Name and the Complainant’s business. The Respondent chose the Domain Name as it was appropriate for an art project he was aiming at launching in connection with an equestrian art collection. In this sense, the Respondent considered that the Domain Name was adequate for such a project since the double XX in the equestrian world is symbolic for oxer –meaning an obstacle for horses-. Nonetheless, the Domain Name was not ultimately used by the Respondent, who decided to use the <artxpose.com> domain name for the above-mentioned art project instead;
(v) By sending e-mails offering the Domain Name for sale the Respondent did not behave in bad faith. In this respect, the Respondent indicates that on September 2005, he received an e-mail message from Network Solutions indicating to him that a certified offer had been made for the purchase of the Domain Name. The Respondent did not respond to that e-mail as he was not interested in selling the Domain Name at that point. Nonetheless, the Respondent did consult Network Solutions’ website and found out that -according to the said company’s criteria - the Domain Name was valued in more than 6,000 US Dollars. At the end of September 2005, the Respondent contacted Sedo.com and arranged to have the Domain Name put in a free listing in order to ascertain its value. This was in case he wanted to sell the Domain Name, as it was not going to be used for its original intended use. As a consequence, the Respondent received several offers for the acquisition of the Domain Names with prices ranging from 500 up to 13,000 US Dollars. In this context, the Respondent decided to send ten e-mails directed to different entities and persons who, according to the Google Internet search website, included the letters “oxxo” in their names. The Complainant was one of these entities and entered into a negotiation with the Respondent that was finally unsuccessful. In connection with this particular issue, the Respondent expressly indicates that some of the e-mails filed by the Complainant in its Complaint were not originally sent by the Complainant – under its own name – but using a fake identity. Such behavior is considered by the Respondent to be in bad faith, and in breach of the Policy.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove to the Panel that the following three circumstances are present in this case in order to obtain the remedy sought, being transfer of the Domain Name:
(1) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) that the Respondent does not hold rights or legitimate interests in respect of the Domain Name; and
(3) that the Domain Name has been registered and is being used by the Respondent in bad faith.
Supplemental filings of the Parties
As indicated in the Procedural History of this decision, both the Complainant and the Respondent have made supplemental filings of documents, apart from the Complaint and the Response, without being required to do so. Thus, a preliminary issue to be decided by the Panel is whether such filings will be accepted and considered.
On this particular issue, previous decisions adopted under the Policy (see, for example, decisions in Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner; WIPO Case No. D2001-1447, AutoNation Holding Corp. v. Rabea Alawneh; WIPO Case No. D2002-0058, or De Dietrich Process Systemsv. Kemtron Ireland Ltd. WIPO Case No. D2003-0484) have found that consideration of whether to accept unsolicited supplemental filings should be informed by the following:
(1) The proceedings under the Policy must be based on a general principle of procedural efficiency;
(2) The parties in the proceeding must be treated equally, so each party has a fair opportunity to present its case; and
(3) Any unsolicited supplemental filing, in order to be accepted, must be relevant to the case and the party filing it must prove that it was unable to provide that information in the Complaint or in the Response.
The Panel has summarily revised the content of the supplemental filings of the parties and notes that they contain observations on some of the allegations included in the Response (in case of the Complainant’s supplemental filing) and on some of the arguments included in the Complainant’s supplemental filing (in case of the Respondent’s supplemental filing). No new facts or information are provided in either document. The documents appear as mere cross-replies between the parties.
The procedure under the Policy is aimed at offering the involved parties a dynamic and flexible tool for solving a dispute on a domain name, avoiding the inconveniences derived from the traditional dispute-resolution procedures (such as, inter alia, the cross-filing of numerous documents). This is why the Policy, the Rules and the Supplemental Rules foresee, as a general principle, that the parties must file just one writ (the complaint and the response) in which their arguments are developed. Only in exceptional circumstances – e.g. in those cases where new relevant facts come to light after filing – has it been considered that the parties may make a supplemental filing.
The Panel considers that in the present case the above-mentioned exceptional circumstances are not present. As indicated above, the supplemental documents filed by the parties focus on offering the corresponding party’s opinion on the other party’s writ. Therefore, the Panel finds that the supplement filings made by the parties will not be taken into account for the purposes of this decision.
A. Identical or Confusingly Similar
The first element required to be established by the Complainant by the Policy is that the Domain Name and the OXXO trademarks owned by the Complainant are identical or confusingly similar.
In the present case, the only difference between the mark OXXO and the Domain Name consists in the inclusion of the “.com” suffix in the Domain Name. This should not be considered as relevant difference between the Domain Name and the Complainants’ OXXO a mark. It is well established that the “.com” suffix can be disregarded for the purpose of the first element of the Policy. Many decisions adopted under the Policy have taken this approach (see, for example, New York Insurance Company v. Arunesh C. Puthiyoth, WIPO Case No. D2000-0812 or A & F Trademark, Abercrombie & Fitch Store, Inc., Abercrombie & Fitch Trading Co., Inc. v. Party Night, WIPO Case No. D2003-0172).
In consequence, the Panel finds that the Domain Name is identical to the Complainant’s mark, and that the Complainant has met the first of the three conditions set out in paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to establish that the Respondent does not hold rights or legitimate interests in respect of the disputed domain name. In this regard, paragraph 4(c) of the Policy foresees a set of circumstances, where the Respondent may be considered as holding said rights or interests. Those circumstances are:
(i) Where, before any notice of the dispute, the Respondent has made use of the disputed domain name, or made demonstrable preparations for its use, in connection with a bona fide offering of goods and services; or
(ii) Where the Respondent has been commonly known by the disputed domain name, even when no trademark or service mark right has been acquired; or
(iii) Where the Respondent is making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In the present case, the Panel finds that the Complainant has made a prima facie showing that none of the above-mentioned circumstances apply.
The main argument of the Respondent in response is that he registered the Domain Name in order to develop an art project specifically directed to the equestrian world. According to the Respondent’s arguments, the Domain Name was convenient for this purpose as it included a double XX (which in the equestrian world seems to refer to an obstacle). On balance, the Panel is not convinced by this argument since:
(i) As indicated by the Respondent in his writ, the double “XX” may have numerous significances apart from the one indicated by him. Moreover, no satisfactory explanation is offered by the Respondent on the reasons that lead him to register a domain name containing in addition to the said double “XX” the letter “O” at the beginning and at the end. The Panel finds quite difficult to accept the Respondent’s explanation as no obvious connection of the word “Oxxo” with the world of horses seems to be given;
(ii) No convincing argument has been provided by the Respondent for justifying the acquisition of the Domain Name at a value which appears to surpass by a considerable margin the reasonable cost of registering a domain name, taking into account that the acquisition of this domain name was allegedly aimed at use in connection with a personal art project. Such an acquisition, per se, does not indicate questionable behavior. However, when coupled with the circumstances here, including that the Respondent offered the Domain Name for sale less than two months after having purchased it for a sum far in excess of the original purchase price, and that the Domain Name was not in fact used, this does not support a conclusion that the Respondent has rights or legitimate interests within the meaning of the Policy.
(iii) In the same sense, should the key element of the project originally linked to the Domain Name be the equestrian world, it is not clear to the Panel why the final version of the project was based on a domain name <artxpose.com> and a website without any obvious reference to horses and the equestrian world.
There is in sum no convincing evidence before the Panel that the Respondent is making a legitimate non-commercial or fair use of the Domain Name. The Respondent has alleged that he intended to use the Domain Name in connection with a personal art project. But the disputed domain has evidently not been used for that purpose, and there is no active website at the Domain Name. Nor there is any evidence before the Panel to support a conclusion that the Respondent has made demonstrable preparations to use of the Domain Name in connection with a bona fide offering of goods or services, or that the Respondent has been commonly known by the Domain Name.
In the circumstances, the Panel finds, that the, Respondent has not been able to convincingly answer the arguments filed by the Complainant on the lack of rights or legitimate interests of the Respondent in the Domain Name. Taking into account the criteria set out in previous decisions adopted under the Policy (see, for example, decisions on Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455, Belupo d.d. v. Wachem d.o.o,; WIPO Case No. D2004-0110, or Lush Ltd. v. Lush Environs, NAF Case No. FA96217), the Panel considers that the Complainant has met the second of the elements required by the Policy.
C. Registered and Used in Bad Faith
The last of the elements required under paragraph 4(a) of the Policy is that the Complainant proves that the Respondent has registered and used the disputed domain name in bad faith.
In regards to this issue, it is important to bear in mind that the circumstances of registration and use may have a cumulative effect, as stated in many decisions adopted under the Policy (see, for example, World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001 or Robert Given Bogen, WIPO Case No. D2000-0001).
Registration of the Domain Name in Bad Faith
As indicated in the previous section of this decision, the Panel considers that the Respondent does not have rights or legitimate interests in respect of the Domain Name. Although this finding does not lead to the conclusion that the Respondent registered the Domain Name in bad faith, it can constitute an indication in this sense.
The Respondent has indicated in the Response that he was clearly aware of the fact that he was registering a domain name that was based on a word that had no meaning in any language. The acquisition and registration of the Domain Name by the Respondent for the sum of 1,160 US Dollars occurred on May 2, 2005. By this date the Complainant had obtained numerous trademark registrations for the mark OXXO within Mexico and a number of other South American jurisdictions including Costa Rica, Panama, Chile and Brazil. The Complainant had also by this date applied for a trademark registration for the mark OXXO in the United States of America (filed 12/04/2005). There is also evidence that the Complainant was at around this time engaged in preparations for an expansion of its business under the OXXO mark, including to the European Union, as indicated in the Complaint by various articles available on the Internet. Therefore, it seems doubtful in the circumstances to the Panel that the Respondent, when purchasing the domain name, was unaware of the Complainant’s OXXO mark, or of the Complainant’s potential interest in acquiring the Domain Name.
It must be borne in mind that the Respondent is someone: (i) who defines himself as a long-time consultant on Internet projects; (ii) who has such a knowledge of the domain name system that allows him to use the services of domain names’ auctions provided by a specialized provider (such as Snapnames); (iii) who purchases a domain name for a price very substantially higher than the costs associated with ordinary registration of domain names, and decides to sell it a short time after its acquisition. Taking into account these circumstances, the Panel considers it highly doubtful that, when registering the Domain Name, the Respondent was not mindful of potential financial gain in relation to sale of the Domain Name to parties including the Complainant.
The Respondent’s subsequent attempt to sell the unused Domain Name supports this as, among other elements, the Respondent acknowledges in the Response that when he decided to offer the Domain Name publicly for sale, he made a search on the Internet and, as a result, he identified and sent to ten entities and persons worldwide using the “oxxo” name for the development of their activities an e-mail offering the Domain Name for sale.
The fact that the Domain Name was offered publicly for sale only two months after having been registered is another indication of absence of good faith in the registration of the Domain Name.
In the circumstances, the Panel considers that the Domain Name was registered in bad faith by the Respondent.
Use of the Domain Name in Bad Faith
As indicated in the Factual Background, the Domain Name was not just publicly offered for sale in a specialized website, but the Respondent actively promoted its sale among potentially interested entities and persons by sending unsolicited e-mail messages inviting them to make a bid for the Domain Name.
In all the said offerings and during the negotiations held with the Complainant, the Respondent requested a price that clearly surpassed any reasonable out-of-pocket expenses related to registration. Nor has the Respondent made any use of the Domain Name other than to offer it for sale.
Such behavior constitutes a clear breach of Paragraph 4(b)(i) of the Policy and has been considered so by numerous decisions adopted under the Policy (see, inter alia, decisions in Uitgerverij Crux v. W. Frederic Isler, WIPO Case No. D2000-0575; Skattedirektoratert v. Eiving Na, WIPO Case No. D2000-1314; Newman/Haas Racing v. Virtual Agents, Inc. WIPO Case No. D2000-1688; Telefónica del Perú SAA v. netEGG.com WIPO Case No. D2001-1248; or Zurich Insurance Company v. Domains for Sale, WIPO Case No. D2001-1423).
Taking into account the above, the Panel considers that the Respondent has proved that the Respondent registered and has used the Domain Name in bad faith, meeting therefore the third of the conditions set out by the Policy.
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, <oxxo.com> be transferred to the Complainant.
Albert Agustinoy Guilayn
Dated: July 10, 2006