WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Iteso, A.C. v. Jose Colin
Case No. D2011-1686
1. The Parties
The Complainant is Iteso, A.C. of Jalisco, Mexico, represented by Langlet, Carpio y Asociados, S.C., Mexico.
The Respondent is Jose Colin of Jalisco, Mexico.
2. The Domain Name and Registrar
The disputed domain name <iteso.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2011. On October 5, 2011, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On October 7, 2011, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On October 10, 2011, the Center received an email communication from the Respondent confirming safe receipt of the Complaint and informing that it would file arguments in its favor. On October 11, 2011 the Center received an email communication from the Respondent with arguments submitted in response to the Complaint.
On November 2, 2011, the Center notified the Complainant that the Complaint did not conform to the size limit specified in the Supplemental Rules, paragraph 13, which was amended on November 4, 2011. On November 24, 2011, the Center requested the Complainant to file the exhibits to the Complaint in a different format due to the impossibility to access to them. The Complainant did so on November 28, 2011.
The Center verified that the Complaint together with the amended Complaint and exhibits satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 December 2, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 22, 2011. The Response was filed with the Center on December 20, 2011.
The Center appointed Reynaldo Urtiaga Escobar as the sole panelist in this matter on January 18, 2012, having previously received his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. The Panel finds that it was properly constituted.
On February 3, 2012, the Panel issued the Administrative Panel Procedural Order No. 1, by which it acknowledged receipt of supplementary filings received by the Center on January 18, and February 1, 2012, on the part of the Respondent, and on February 1, 2012, on the part of the Complainant. Given that the Respondent’s supplementary filings were not copied to the Complainant, as required by paragraph 2(h)(iii) of the Rules, the Center forwarded, at the Panel’s request, the Respondent’s supplementary filings for the Complainant’s information only.
The Panel Order informed the parties of the expedited nature of the UDRP administrative proceedings, which precludes filing of submissions other than the Complaint and the Response thereto, except where filed in response to a deficiency notification or if requested by the Center or the Administrative Panel. In reserving its exercise of discretion to admit or not any of the supplementary filings in due course in accordance with paragraph 10 and 12 of the rules, the Panel communicated to the parties that no further submissions were warranted from either side.
In light of the circumstances, the Panel advised the parties that the date for submission of the Decision to the Center was extended up to February 9, 2012.
4. Factual Background
The Complainant is a well known Jesuit-oriented university in Guadalajara, Jalisco, where it was incorporated in 1957.
The Complainant holds since 1999, a trademark registration in Mexico for ITESO in connection with its higher educational services. The Complainant operates a website under “www.iteso.mx” and “www.iteso.net”, where it provides information regarding the academic majors and degrees on offer.
The disputed domain name was registered on May 1, 2000. On the date of this Decision, the disputed domain name resolves to a page showing two black-and-white snapshots dated April 1955 (in Spanish) featuring people in suits and a priest apparently touring an empty land.
There was no evidence in the case file as to when the Complainant became aware of the disputed domain name’s registration, nor of any previous communications between the parties.
5. Parties’ Contentions
The Complainant’s factual and legal submissions can be summarized as follows:
i. The disputed domain name is confusingly similar to the Complainant’s ITESO trademark and incorporates the famous and well-known trademark;
ii. The disputed domain name resolves to a landing page featuring pay-per-click links to third party sites, none of them being authorized by or affiliated with the Complainant (as shown in Annex 6 of the Complaint);
iii. The Respondent has no rights or legitimate interests in the ITESO trademark because it has never been authorized to register or use the disputed domain name or the Complainant’s trademark.
iv. The Respondent neither holds trademark rights in ITESO, nor is commonly known by the name “Iteso” or any variation thereof;
v. The Complainant’s registration of the trademark ITESO in Mexico precedes the Respondent’s registration of the disputed domain name;
vi. The Respondent had knowledge of the Complainant’s famous ITESO trademark prior to the registration of the disputed domain name;
vii. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without an attempt for commercial gain;
viii. The Respondent has intentionally registered the disputed domain name explicitly for the purpose of making illegitimate or unfair use of ITESO trademark by using the disputed domain name to advertise and sell products that are not made or authorized by the Complainant;
ix. The Respondent’s repeated references to the ITESO trademark by displaying “iteso guadalajara” and “Universidad iteso” on its websites confirm the Respondent’s awareness of the fame and goodwill associated with the ITESO trademark at the time of registration of the disputed domain name;
x. The Respondent registered and has been using the disputed domain name intentionally to misdirect and divert customers looking for information about the Complainant and its ITESO trademark to Respondent’s for-profit websites.
The Respondent’s assertions made in the Response are as follows:
i. The disputed domain name <iteso.com> was registered with the idea of getting a generic name made of the English word “it” and its Spanish translation “eso”;
ii. The disputed domain name <iteso.com> was registered on May 1, 2000, that is more than 11 years ago and the Respondent registered and has been using it first and in good faith having preferential right to the disputed domain name;
iii. The disputed domain name was registered with the idea of building a community with more than 130 users, and has been used primary to supply “[…]@iteso.com” email addresses free of charge to the website users;
iv. The Complainant has registered multiple domains names using the name “Iteso” extensions, falling in abusive registration of domain names;
v. The Complainant’s first domain name registered was <iteso.mobi> and one minute later was <iteso.me>. They both were registered and both are not being used as they should be. The Respondent is claiming reverse domain name hijacking due to the fact that the Complainant registered them but is not using them;
vi. The Respondent had never received any call or email from the Complainant or its lawyers;
vii. The Respondent is using in good faith the disputed domain name <iteso.com>..
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to make out its case, the Complainant must demonstrate that the following three conditions are met:
i. The disputed domain name is identical or confusingly similar to a mark or service mark in which the Complainant has rights; and
ii. The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
iii. The disputed domain name has been registered and is being used in bad faith.
A. Preliminary considerations regarding the Supplemental filings
In its supplemental filings, the Respondent puts forward ethical and malpractice allegations on the part of the Complainant’s authorized representative, Mr. Enrique Ochoa de Gonzalez Argüelles, arising out of the latter’s dual role as Complainant’s representative in this case and WIPO Panelist.
The Respondent assumes that in all likelihood, Mexican WIPO Panelists know each other, and consequently they are unfit to serve as panelists when a Mexican fellow panelist is representing a party in UDRP proceedings. The Respondent then asks the Center about the possibility of appointing a non-Mexican Panelist.
The Panel wishes to emphasize that nothing in the Policy, Rules or the Supplemental Rules prevents a UDRP panelist from acting as counsel for one of the parties in a domain name dispute that he/she has not been called to adjudicate.
A UDRP panel shall be independent of the dispute service resolution provider, the registrar and the parties pursuant to paragraph 7 of the Rules. In this case, the Panel has submitted and signed a Statement of Acceptance and Impartiality in relation to this case.
The Panel hereby reaffirms that there are no facts or circumstances, past or present, or that could arise in the foreseeable future that might be of such a nature as to impair its ability to decide this case in an unbiased fashion.
This Panel is independent and impartial and finds nothing in the evidence or assertions of the Respondent that raise justifiable doubts as to its independence or imparciality, or as to the existence of any conflict of interest. See Wal-Mart Stores, Inc v. Larus H. List, WIPO Case No. D2008-0193 and Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505.
With regard to the Complainant’s supplemental filings, the Panel notes that the Complainant’s unsolicited submissions are nothing but a reply to the Respondent’s Response and hereby rejects the Complainant’s supplemental filings altogether.
B. Identical or Confusingly Similar
As noted by previous UDRP panels, the question under paragraph 4(a)(i) of the Policy is whether the disputed domain name is identical or confusingly similar to the Complainant’s trademark, not whether the website to which the disputed domain name resolves will confuse Internet users. See The Vanguard Group, Inc. v. John Zuccarini, WIPO Case No. D2002-0834 (a complainant need not to establish actual confusion because the test is objective, not subjective).
The Complainant submits that the disputed domain name is identical to its well-known trademark ITESO. In the alternative, the Complainant alleges that the disputed domain name is likely to cause confusion to its consumers. The Respondent does not even refute the Complainant’s contentions on this point.
A visual comparison between the word “iteso” being the operative part of the disputed domain name, and the trademark ITESO, suffices to demonstrate that the disputed domain name is identical to the Complainant’s trademark.
As a result, this Panel finds that the Complainant has met the first element of paragraph 4(a) of the Policy.
C. Rights or Legitimate Interests
The Panel notes that the Complainant has never licensed or authorized the Respondent to use its ITESO trademark as domain name or otherwise.
Based on the seniority and continuous use of its trademark rights in Mexico, the Complainant asserts that the Respondent neither holds trademark rights of its own on the term “Iteso”, nor has it been commonly known by the disputed domain name. The Respondent claims that “iteso” is a generic term based on the combination of the pronoun “it” and its Spanish counterpart “eso”. Bringing together the said two words in different languages explains the election of the disputed domain name according to the Respondent.
The Panel finds the Respondent’s explanation implausible as the website to which the disputed domain name has resolved for years is a parking page with sponsored third party links. Moreover, the Respondent did not demonstrate that there was intrinsic value and usefulness in the supposedly generic term “iteso”, as different from its commercial value as trademark.
The Panel further concludes that the Respondent cannot avail itself of any of the defenses set forth in paragraph 4(c) of the Policy:
i. Before any notice to you of the dispute, your use of, or demonstrable preparations to use, the disputed 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 disputed 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 disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
This Panel thus finds that the Complainant has met the second requirement of paragraph 4(a) of the Policy.
D. Registered and Used in Bad Faith
The Panel notes that the Complainant’s trademark ITESO is the acronym for “Instituto Tecnológico y de Estudios Superiores de Occidente”. See Instituto Tecnológico y de Estudios Superiores de Occidente, A.C. v. David Hernández Hernández, WIPO Case No. DMX2011-0030 (The ITESO trademark turns out to be an acronym of the Complainant’s name).
Because the word “iteso” is a coined term that has no dictionary meaning, the Complainant’s trademark is held out to be so inherently distinctive that its sole misappropriation by others presupposes in this Panel’s view bad faith registration and use within the meaning of the Policy. See eBay Inc. v. xu kefei (kefei xu), WIPO Case No. D2008-0481 (“eBay” is an invented word, and as such, it is not the kind of expression the Respondent might have thought of if it did not already know of the Complainant).
Further, because Respondent’s address of record is in the state of Jalisco, where the Complainant has continuously used its ITESO trademark since 1957, it is inconceivable for the Panel that the Respondent had registered the disputed domain name if it were not for the purpose of diverting traffic and creating confusion with the Complainant and its ITESO trademark. See Universidad Autónoma de Nuevo León c. Creatividad Internet Enlace S.A. y Jesús Ignacio Valdés Mendoza, WIPO Case No. D2009-0385 (given that the Respondent is domiciled not only in the same state but in the same city that the Complainant, the Respondent could and ought to have known of the Complainant’s trademark by the time of registration of the disputed domain name); see also Salvamento Automotriz, S.A de C.V. v. Diana Cano, WIPO Case No. DMX2010-0016 (because the Respondent’s address is located in Yucatán, the very same municipality where the Complainant is based, the Respondent should have known of the Complainant’s trademark rights).
Furthermore, the Panel notes that the website at the disputed domain name before receiving the Complaint, was a parking page with pay-per-click links to third party’s site for a profit, thus triggering the ground of bad faith use laid down by paragraph 4(b)(iv) of the Policy.
In sum, the Panel finds that the Respondent registered and has been using the disputed domain name in bad faith for eleven years, and accordingly, the Complainant has discharged its burden under paragraph 4(a)(iii) of the Policy.
Finally, in view of the above and in accordance with paragraph 15(e) of the rules, this Panel does not find that the Complaint was brought in bad faith and declines to find Reverse domain Name Hijacking.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <iteso.com> be transferred to the Complainant.
Reynaldo Urtiaga Escobar
Dated: February 10, 2012