WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Promedon S.A. v. Andres Weber
Case No. D2006-1575
1. The Parties
The Complainant is Promedon S.A., of Cordoba, Argentina, represented by Alfredo Olmedo Ferreira, Argentina.
The Respondent is Andres Weber, of Chevy Chase, Maryland, United States of America represented by Brian Smith, United States of America.
2. The Domain Name and Registrar
The disputed domain name is <promedon.com> (hereinafter, the “Domain Name”).
The Domain Name is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2006. On December 12, 2006, the Center transmitted by email to Network Solutions a request for registrar verification in connection with the Domain Name. On December 13, 2006, Network Solutions LLC 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 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 January 9, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 29, 2007. The Response was filed with the Center on January 23, 2007.
The Center appointed Mr. Albert Agustinoy Guilayn (the “Panel”) as the sole panelist in this matter on February 16, 2007. 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.
On March 2, 2007, the Panel issued a panel order (the “First Panel Order”) requiring the Respondent to file a number of documents relating to the investment allegedly made by him in connection with the Domain Name. In this First Panel Order the Respondent was required to submit the documentation no later than March 12, 2007 and, as a result, the date for issuing the decision was set on March 21, 2007.
Because Respondent’s reply to the First Panel Order, did not satisfy the requirements of the Panel, the Panel issued a second panel order (the “Second Panel Order”), requiring the Respondent to file the requested documentation no later than March 30, 2007. The date for issuing the decision was extended to April 6, 2007.
On March 29, 2007 the Respondent filed the documentation required by the Second Panel Order. On April 2, 2007, the Complainant made an unsolicited supplemental filing (the “Complainant’s Supplemental Filing”) commenting on the documentation filed by the Respondent in connection with the Second Panel Order.
4. Language of the Proceeding
The Complaint was filed in Spanish and the Response was filed in English. Considering that the registration agreement is in English, the Panel must make a determination as to the language if the proceeding.
Paragraph 11(a) of the Rules clearly states: “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise.” Moreover, taking into account the fact that the language used by Network Solutions LLC is English and that both parties have shown they are able to understand and communicate in English, the Panel determines that English will be the language of this proceeding.
Having said this, the Panel has not deemed it necessary to require the Complainant to translate the Complaint from Spanish into English, as the Respondent has clearly shown his proficiency in the Spanish language (given the extension and detail of the Response).
As indicated in the Procedural History, the Complainant has submitted a supplemental filing, without having been required to do so by the Panel, in connection with the Respondent’s reply to the Second Panel Order.
According to the criteria set out in previous decisions adopted under the Policy (see, for example, decisions in Delikomat Betriebsverpflegung Gesellshcaft 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 Systems v. Kemtron Ireland, Ltd., WIPO Case No. D2003-0484), unsolicited supplemental filings should be accepted by the Panel if the following two circumstances are met:
(i) the eventual acceptance of such filings should not breach the guarantee to both parties to be treated equally, so each one has a fair opportunity for presenting its case; and
(ii) the supplemental filings should address relevant issues which were not known by the filing party at the time that it filed its documents, and that could affect the outcome of the decision.
After having made a summary review of the content of the Complainant’s Supplemental Filing the Panel finds that it does not pertain to new documents or new circumstances that were previously unknown to the Complainant. On the contrary, the Complainant’s Supplemental Filing is a rejoinder to Respondent’s reply to the Second Panel Order.
Accordingly, the Panel considers that the Complainant’s Supplemental Filing does not fulfill the above-mentioned requirements and, therefore, the Panel will not consider it in its decision.
6. Factual Background
6.1 The Complainant
The Complainant is an Argentine company that was first incorporated in 1985, and that focuses its activities in the manufacture and distribution of medical products. The Complainant subsequently incorporated subsidiaries in Brazil and Chile. According to the documents attached to the Complaint, the Complainant is one of the leading Argentine companies in the sector of medical devices, having obtained authorization for distribution of its products, inter alia, in Argentina, Brazil, the European Union, Canada, Korea, Australia, Mexico, Turkey, Colombia, Peru or Uruguay.
The Complainant has constantly used the name “Promedon” for the development of its activities and for branding its products. The Complainant currently owns the following trademarks in Argentina:
- Trademark No. 1,467,108, P PROMEDON S.R.L., registered on June 16, 1989 under class 42 of the International Nomenclator of Trademarks;
- Trademark No. 1,358,898, P PROMEDON S.R.L., registered on June 16, 1989 under class 10 of the International Nomenclator of Trademarks;
- Trademark No. 1,770,858, P PROMEDON S.R.L., registered on August 6, 1999 under class 10 of the International Nomenclator of Trademarks.
Moreover, Promedon do Brasil Produtos Medico-Hospitalares, Ltda. (a fully-owned Brazilian subsidiary of the Complainant) owns the Brazilian trademark No. 818945168 P PROMEDON, registered on November 22, 1995 under classes 9 and 15 of the International Nomenclator of Trademarks.
The Complainant has a presence on the Internet by means of its corporate website, which is connected to the domain name <promedon.com.ar> (registered by the Complainant on February 25, 1999). The Complainant and its subsidiaries do also own other domain names based on the name “Promedon” such as <promedon.com.br> (registered on December 2, 1998), <promedon.cl> (registered since January 17, 2006), <promedon.net> (registered on March 8, 2002), and <promedon.info> (registered on March 8, 2002).
6.2 The Respondent
The Respondent appears to be an individual who, according to the Response to the Complaint, is one of the major stockholders and member of the board of directors of a US company called RPMM Corporation. This company is active in different segments linked to the field of medicine, such as book publishing, magazines and consulting and technical services. According to the Response to the Complaint, the activities of the Respondent and RPMM Corporation are conducted principally in the United States of America and Continental Europe.
6.3 The Domain Name
The Domain Name was registered on January 4, 2000. In the Response to the Complaint it is indicated that the Domain Name was registered in connection with a business project which aimed at providing on-line medical devices troubleshooting and technical support through a software application operated by means of a website. According to the Respondent, such a website would be connected to the Domain Name and supported by a land-based center under the brand “Promedon” within the continental United States of America.
As of the issuing this decision, the website connected to the Domain Name appears to be under construction and it contains the following three sections:
- “Home”: This section indicates that the website belongs to RPMM Corporation’s medical division and that, once operative, it will allow the distribution of medical products as well as the provision of technical services. This section is complemented with an animation that consists of a rotating map of South America;
- “About us”: This section indicates that RPMM was launched in 1992 and describes the activities and goals of its medical division. The text in this section states that: “RPMM Corp (Medical Division Products) has grown in its technology and staff to be a powerful presence in the world-market (USA, Argentina, Spain and Chile)”. In this section as well, an animation that consists of a rotating map of South America appears; and
- “Contact”: This section contains an e-mail address for contacting RPMM Corporation and, additionally, a new description of the services to be provided on the website. This section contains language stating that any Internet user visiting this website “will be able to receive information and advice on medical & laboratory equipment. Moreover, view and purchase a huge variety of items in a 3-D virtual gallery environment that will be easy to navigate. By utilizing the latest technology, visitors can inspect items from all angles, even zoom into detail. All products are fully catalogued with specifications, weights, dimensions etc.” As in the previous section, an animation with a rotating map of South America is included.
Before the Complaint was filed the parties exchanged a number of communications by e-mail in order to reach an amicable resolution to the dispute. These took place between Mr. Matias Altamira (the attorney representing the Complainant) and Mr. Javier Gutiérrez (self-identified in the e-mails as “representative with powers” –(“apoderado” in Spanish) of RPMM Corporation as well as partner of an Argentine audit firm). In these e-mails exchanged between June 12, 2006 and July 27, 2006, the Complainant offered to buy the Domain Name for a reasonable amount of money. The Respondent indicated that the Domain Name had been registered in connection with a business-project that had been put on hold by RPMM Corporation and an agreement could be reached if the Complainant offered reasonable consideration for the Domain Name. Nonetheless, the Complainant’s proposal was finally rejected by the Respondent as it considered that the ultimate amount offered by the Complainant (US$3,000) was clearly insufficient.
7. Parties’ Contentions
The Complainant contends in the Complaint that:
- It is a company that has been developing its activities since its incorporation in 1985 with the name “Promedon”. Given the importance of such a name, the Complainant has registered it as a trademark in Argentina and in Brazil (through its Brazilian subsidiary);
- The Domain Name is identical to the PROMEDON trademarks owned by the Complainant;
- The Respondent does not hold any genuine legitimate right or interest In the Domain Name as the Respondent’s company (RPMM Corporation) does not use it in any way but merely holds it. At this moment and for the last seven years, the Domain Name has been connected to a temporary website which merely indicates that in the future a services-provision platform will be associated with the Domain Name.
- The Domain Name was registered by the Respondent in bad faith since the onset because the Complainant had already consolidated its position in the medical products sector (where the Respondent’s company seems to operate). Therefore, it seems obvious that at the moment of registering the Domain Name the Respondent was clearly aware of Complainant’s trademark;
- The Domain Name has been used in bad faith because the Respondent’s main goal in connection with the Domain Name has been to sell or lease it for a price that clearly exceeds the Respondent’s out-of-pocket expenses. This assertion is based on the negotiations that took place between the parties, as the Respondent rejected an offer of $3,000 (USD), an amount that exceeds any reasonable cost paid by the Respondent in connection with the Domain Name. Moreover, the Complainant contends that the Domain Name has been used in bad faith by the Respondent as its registration unfairly prevents the Complainant from properly using its trademark on the Internet, in addition to perturbing business. Finally, the Complainant contends that the Domain Name is being used in bad faith by the Respondent as, given the current structure and lay-out of the website connected to the Domain Name, diverts Internet users looking for the genuine corporate website of the Complainant; and
- Taking into account all these issues, the Domain Name should be transferred to the Complainant.
The Respondent contends in the Response that:
- A formal objection must be raised in connection with the present proceeding as, instead of the Panel deciding the dispute under the Policy, it should be submitted before the courts of Maryland in the United States of America. The contrary would suppose a violation of the US Anti-Cybersquatting Consumer Protection Act as well as of other applicable Lanham Act provisions;
- The registration and use of the Domain Name does not suppose an infringement of the Complainant’s rights on its PROMEDON trademarks as the core business of the Respondent vis-à-vis the Complainant is clearly different and, consequently, no actual confusion can be given. Additionally, the Respondent contends that rights derived from a trademark registration in Argentina cannot be invoked against RPMM Corporation, a US entity, in order to claim exclusivity in the Domain Name;
- It has made a significant investment in connection with the Domain Name, due to the importance given to the corresponding business project. Therefore, the Respondent considers that it is obvious that it holds a legitimate interest or right in the Domain Name, which cannot be confused with the Complainant’s trademarks or activities;
- Another element showing the evident fair use of the Domain Name by the Respondent is that the name “Promedon” was not inspired on the Complainant’s trademarks but corresponds to an abbreviation of the words “Professional Medical On-line”. In this connection, the Respondent indicates that the name “Promedon” is subject to substantial use unaffiliated with the Complainant and that in this case there is no famous trademark involved;
- The Domain Name has not been registered in bad faith, as the PROMEDON trademark has not been registered in the US, the jurisdiction where the Respondent is seated. Moreover, neither RPMM Corporation nor the Respondent have contacted the Complainant in order to sell the Domain Name. As a matter of fact, the communications between the parties were initiated at the request of the Complainant and must be considered unilateral propositions;
- The Respondent has not prevented at any moment the Complainant from having an Internet presence by means of a Generic Top Level Domain. On the contrary, the Respondent has found that the Complainant has registered and uses the domain name <promedon.net> in connection with its corporate website;
- The Respondent has not aimed at creating a likelihood of confusion with the Complainant or its trademarks. In this respect, the Respondent contends that Internet users cannot be confused by the Respondent’s use of the Domain Name since “Promedon” does not exclusively identify the Complainant;
- Given all the above-described circumstances, the Complaint should be rejected; and
- The Complaint seems to have been filed as an attempt to harass the Respondent and therefore its filing should be considered an abuse of this proceeding. Thus, the Respondent requests the Panel to declare that the Complainant has adopted a ‘reverse domain-name hijacking’ behavior, as set forth in paragraph 15(e) of the Rules.
Additionally, in the filing made in reply to the Second Panel Order, the Respondent has presented a number of documents. Of particular interest to the Panel are the following:
- A summarized version of the Respondent’s business plan relating to the project where the Domain Name was a relevant asset; and
- A certification of investments issued by an Argentine accountant (Mr. Javier Gutiérrez, also RPMM’s attorney-in-fact) certifying that RPMM Corporation made an aggregate investment of US$91,723.14 during the period comprised between January 1, 2000 and December 31, 2006 in connection with the Domain Name. According to this certification, such an amount is divided in the following concepts: US$1,723.14 corresponding to “organizational expenses” and US$90,000 corresponding to costs of “software research and development.”
8. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove to the Panel the following three circumstances in order to obtain the transfer of the Domain Name:
(A) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(B) that the Respondent does not have any rights or legitimate interests in respect of the Domain Name; and
(C) that the Domain Name has been registered and is being used by the Respondent in bad faith.
The presence of all these three circumstances shall be analyzed below.
Nonetheless, before proceeding to such an analysis, the Panel must consider the Respondent’s allegation that the Policy is an inappropriate means for resolving the present dispute. The Respondent contends that, given the implications of this case, the dispute should be submitted to the courts of Maryland, in the United States of America.
The Panel reminds the Respondent that, when he registered the Domain Name, he accepted the terms and conditions set out in the registration agreement established by Network Solutions. Therefore, by accepting the terms of this agreement, the Respondent agreed to be bound by the Policy vis-à-vis any dispute related to the Domain Name. In any case, the Respondent must also be reminded that, pursuant to paragraph 4(k) of the Policy, court proceedings are fully available to him. Therefore, should the Respondent choose to submit the dispute before court in the United States of America he is absolutely entitled to do so under the Policy.
The Panel considers that this approach is in accordance with the criteria set out by numerous previous decisions dealing with similar circumstances (see, for example, decisions in Draw-Tite, Inc. v. Plattsburgh Spring Inc., WIPO Case No. D2000-0017; The London Marathon Limited v. Websitebrokers Limited, WIPO Case No. D2001-0157; Playboy Enterprises International, Inc. v. Federico Concas, a.k.a John Smith, a.k.a. Orf3vsa, or WIPO Case No. D2001-0745; Deutsche Telekom AG v. Oded Zucker, WIPO Case No. D2004-0749).
A. Identical or Confusingly Similar
According to the Policy, the first element that must be proven by the Complainant is that the Domain Name is identical or confusingly similar to the Complainant’s trademarks.
The comparison must be made between the Complainant’s trademarks P PROMEDON S.R.L. and the Domain Name. Such a comparison shows two main differences: the trademark includes additional letters apart from “Promedon” and the Domain Name includes the “.com” suffix. These differences are analyzed below in order to see if they are sufficient for avoiding confusion between the Domain Name and the Complainant’s trademarks.
The first difference existing between the Complainant’s trademarks and the Domain Name is not sufficient to avoid a finding of confusing similarity. Certainly, the letters “P” (included in the graphical representation of the Complainant’s trademarks as a capital letter relating to the name “Promedon”) and “S.R.L.” (which relates to the original corporate form adopted by the Complainant, Sociedad de Responsabilidad Limitada, i.e., limited liability company) are secondary elements complementing the mark PROMEDON (which constitutes the core distinctive element of the trademark). The Panel finds that the Domain Name incorporates the key distinctive word of the Complainant’s trademark and, hence, the composition of the Domain Name could confuse Internet users. This approach has already been taken in previous decisions dealing with similar circumstances (see, for example, Archer-Daniels-Midland Company v. Robyn Bodine (a.k.a. D.L. Tate, Donnie Tate, WIPO Case No. D2002-0482; March of Dimes Birth Defects Foundation v. Modwalk America, WIPO Case No. D2003-0062; or Banque Saudi Fransi v. ABCIB, WIPO Case No. D2003-0656).
The second difference between the Complainant’s trademarks and the Domain Name (the inclusion of the .com suffix in the latter) is due to the current technical specificities of the Domain Name System (DNS). Therefore, this difference should not be taken into account in order to evaluate the identity or similarity between the Domain Name and the Complainant’s trademark (in this regard, see, for example, New York Life Insurance Company v. Arunesh C. Puthiyoth, WIPO Case No. D2000-0812 or A & F Trademark, Inc., Abercrombie & Fitch Stores, Inc., Abercrombie & Fitch Trading Co., Inc. v. Party Night, Inc., WIPO Case No. D2003-0172).
Consequently, the Panel finds that the Domain Name is confusingly similar to the P PROMEDON S.R.L. trademarks owned by the Complainant.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the Domain Name. In this regard, paragraph 4(c) of the Policy sets forth a number of circumstances where the Respondent may have rights or legitimate interests. Those circumstances are:
- To have used the Domain Name or to have made demonstrable preparations for its use before any notice of the dispute in connection with a bona fide offering of goods and/or services; or
- To have been commonly known by the Domain Name, even when no trademark or service mark rights had been acquired; or
- To make a legitimate non-commercial 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.
In the present case, the Respondent claims that the Domain Name was registered and intended for use in connection with a business project in which its company has invested throughout the years a significant amount of money. Nonetheless, the development of the website linked to the Domain Name has not been completed yet, even though seven years have elapsed since its registration. The Respondent explains this by pointing to the complexity of the project, which allegedly would facilitate on-line troubleshooting and technical services relating to medical products.
Given this lack of development, and according to the criteria set out by other decisions adopted under the Policy dealing with similar circumstances (see, for example, decisions in Medisite S.A.R.L. v. Intellisolve Limited, WIPO Case No. D2000-0179; Sydney Markets Limited v. Nick Rakis trading as Shell Information Systems, WIPO Case No. D2001-0932; Quotesmith.com, Inc. v. Neal J. Solomon, WIPO Case No. D2002-0523; DigiPoll Ltd. v. Raj Kumar, WIPO Case No. D2004-0939; or Pepperdine University v. BDC Partners, Inc., WIPO Case No. D2006-1003) the Respondent, in order to prove that he holds a legitimate right or interest on the Domain Name, should be able to show that he has made preparations to use the Domain Name in connection with a bona fide offering of goods or services.
As stated above, in this case such a supposed bona fide offering of goods or services would consist on the development of a website that would allow the Respondent’s company to render on-line services. In order to prove this assertion, and after being required by the First and Second Panel Orders, the Respondent has filed a series of documents. Among such documents, the Panel will consider in its decision the following:
- A business plan relating to the above-described project; and
- A certification of investments issued by an Argentine accountant, certifying that RPMM Corporation made an aggregate investment of US$91,723.14 in connection with the Domain Name.
After having reviewed in detail these documents (given their importance for proving the existence of a right or legitimate interest of the Respondent in the Domain Name), the Panel makes the following observations:
- The business plan presented by the Respondent consists of a graphical presentation containing, in the opinion of the Panel, quite generic statements on the structure and development of the business linked to the Domain Name. Therefore, it does not seem convincing evidence, since in the Panel’s view it lacks a reasonable degree of detail for the purported undertaking. Thus, because previous decisions adopted under the Policy have considered that an extensive and elaborated business plan can be an evidence of projected use in good faith of a domain name (see, for example, Titan Industries Limited v. Tanishq Corporation, WIPO Case No. D2000-1793; or The Jolt Company v. Digital Milk, Inc., WIPO Case No. D2001-0493), in this case the document filed by the Respondent does not prove the existence of a legitimate interest or right in the Domain Name.
- The certification of investments filed by the Respondent also poses a number of questions on its power to prove the existence of a legitimate interest or right in the Domain Name. The Panel grounds its assertion on the following findings:
(i) The document is signed by Mr. Javier Gutiérrez who defines himself as an “independent certified public accountant”. It is hard for the Panel to understand how can Mr. Gutiérrez declare himself independent from a company on behalf of which he has personally negotiated for the transfer of the Domain Name. The doubts in connection with this issue increase taking into account that Mr. Gutiérrez indicated that he was an attorney-in-fact of RPMM Corporation in some of the e-mails given in the above-mentioned negotiation. If this were the case, it creates an obvious conflict of interest and the document would not be valid at all; and
(ii) According to the certificate filed by the Respondent, RPMM Corporation has invested more than US$90,000 for the development of the website linked to the Domain Name. Nevertheless, such an investment does not make sense in light of the current state of the website, which has quite limited contents. The Panel considers that the scarce development of the website should not automatically exclude the feasibility of the alleged investment as the “software research and development” (on which the Respondent alleges to have spent US$90,000) could not had been incorporated yet to the website due to technical or commercial reasons. Nonetheless, the Respondent has not filed any additional evidence showing results of such a significant investment.
As a consequence, the Panel finds that this certificate of investments does not prove that the Respondent holds a legitimate interest or right in the Domain Name. Therefore, none of the documents filed by the Respondent are adequate to persuade the Panel that the Respondent has made genuine preparations to use the Domain Name.
No other circumstances seem to apply in the present case for considering that the Respondent holds a legitimate interest or right in the Domain Name. Indeed, the Respondent has neither filed convincing evidence of being commonly known by the Domain Name, nor of having made a legitimate non-commercial or fair use of the Domain Name.
Taking into account the above statements, the Panel finds that the condition set out by paragraph 4(a)(ii) of the Policy has been met by the Complainant.
C. Registered and Used in Bad Faith
The last of the elements set forth by paragraph 4(a) of the Policy is that the Complainant proves that the Respondent has registered and uses the Domain Name in bad faith.
In this regard, the Panel points out that registration and use in bad faith of the Domain Name are cumulative conditions under the Policy (as established since the beginning of the application of the Policy, for example in World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001, or Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001).
i. Registration of the Domain Name in Bad Faith
First of all, the Complainant must prove that, at the moment of registering the Domain Name, the Respondent was guided by bad faith purposes.
In this connection, the Complainant contends that the Respondent registered the Domain Name for the purpose of selling or renting it for a price that clearly exceeds the costs paid in connection with its. In support of this contention, the Complainant indicates that the Respondent refused a proposal of transfer for US$3,000, an amount that the Complainant states clearly exceeds the reasonable costs that the Respondent could have incurred in connection with the registration and maintenance of the Domain Name.
The Panel does not accept this allegation because the offer to purchase the Domain Name (and the ensuing negotiation) was initiated by the Complainant. The Respondent did not contact the Complainant to offer the Domain Name for sale or rent. Nor did the Respondent offer the Domain Name for sale to the public.
The Complaint also contends that the Respondent registered the Domain Name in bad faith because the main purpose for such a registration was to hamper the registration and use of the Domain Name by the Complainant. The Panel finds that there is evidence that the Respondent was aware of the existence of the Complainant’s trademark when he registered the Domain Name. In making this finding, the Panel has considered the following:
- As indicated in the Response to the Complaint, RPMM Corporation has a division whose activities are related to medical products and services. This is the sector where the Complainant also focuses its activities. As a consequence, it is quite likely that the Respondent was aware of the existence of the Complainant when he registered the Domain Name;
- The above-mentioned is reinforced by the fact that, according to the information posted in the “contact us” section of the website linked to the Domain Name, RPMM Corporation has been present for years in Argentina and Chile, two of the most important markets where the Complainant operates its activities; and
- The word “Promedon” cannot reasonably be considered a generic term. Certainly, it has no sense either in Spanish or in English. As a consequence, the most likely explanation for the registration of the Domain Name using such a word is that the Respondent was aiming at registering a domain name which was confusingly similar to the Complainant’s most famous trademark.
Taking into account the above-mentioned circumstances, the Panel considers that the most likely explanation for the registration of the Domain Name is that the Respondent was aware of the existence of the Complainant and aimed at preventing the Complainant from registering the Domain Name, with the likely intent of disrupting the Complainant’s activities.
The Panel also notes, again, that the Respondent does not hold any legitimate interest or right in the Domain Name. This is still another argument for considering that in the present case the registration of the Domain Name was made in bad faith.
Consequently, the Panel considers that the Respondent registered the Domain Name in bad faith.
ii. Use of the Domain Name in Bad Faith
As previously indicated, although the Domain Name was registered seven years ago, the website linked to it contains a very basic information. The homepage of this website indicates that the website is “under construction.”
Taking into account the evident similarity between the Domain Name and the Complainant’s trademarks (which, in the Panel’s perspective, is accentuated by the fact that a map of South America, i.e., the region where the Complainant focuses its activities, is included in each one of the sections of the current website linked to the Domain Name), and the lack of existence of a legitimate interest or right in the Domain Name by the Respondent, the Panel does not foresee any potential use of the Domain Name that would not infringe on the Complainant’s rights.
This is sufficient for the Panel to conclude that the Domain Name is being used in bad faith. Such an approach was followed in precedent decisions dealing with similar scenarios (see, for example, TPI Holdings, Inc. v. JB Designs, WIPO Case No. D2000-0216; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574; Brown & Williamson Tobacco Corp., et al. v. Dennis Wilkins, WIPO Case No. D2001-0865; Gaggia S.p.A v. Yokngshen Klingi, WIPO Case No. D2003-0982; or Mediacorp Radio Singapore PTE. Ltd. v. HL Lim aka Hwee Lee Lim, WIPO Case No. D2004-0291).
Consequently, the Panel finds that the Respondent has used the Domain Name in bad faith.
Therefore, the Panel considers that the condition set out by paragraph 4(a)(iii) of the Policy has been met by the Complainant.
9. Reverse Domain Hijacking
Taking into account the arguments in Section 8 above, the allegations of “reverse domain hijacking” made by the Respondent are rejected by the Panel.
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 <promedon.com> be transferred to the Complainant.
Albert Agustinoy Guilayn
Dated: April 12, 2007