WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Digicel Caribbean Limited v. Jesus Del Toro, digicel/ J. Jesús del Toro Martínez

Case No. D2012-0552

1. The Parties

The Complainant is Digicel Caribbean Limited of Castries, St. Lucia, internally represented.

The Respondent is Jesus Del Toro, digicel of Chicago, Mexico/ J. Jesús del Toro Martínez of La Barca Jalisco, México, represented by Guillermo Martínez Cons, Mexico.

2. The Domain Name and Registrar

The disputed domain name <digicel.com> is registered with Dotster, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2012. On March 19, 2012, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the disputed domain name. On March 19, 2012, Dotster, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint to the Complaint on March 22, 2012. The Center verified that the Complaint together with the amended Complaint 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 March 27, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 16, 2012. The Response was filed with the Center on April 14, 2012.

The Center appointed Miguel B. O’Farrell as the sole panelist in this matter on April 25, 2012. 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 May 3, 2012, the Complainant submitted to the Center an unsolicited Supplemental Filing; on May 7, 2012, the Complainant submitted further unsolicited “supplemental evidence” in support of its earlier Supplemental Filing. On May 7, 2012 the Respondent submitted a reply to the Complainant’s Supplemental Filing.

4. Factual Background

The Complainant is Digitel Caribbean Limited, a company incorporated under the laws of St. Lucia in 2001.

The Complainant owns several trademark registrations composed of or including “digicel” in many different countries, such as Aruba, Bahamas, Barbados, Bolivia, Costa Rica, Cuba, Ecuador, the European Union, France, the United Kingdom, and Indonesia, among others.

The Respondent is Jesús Del Toro Martinez from Mexico.

The Respondent filed a trademark application for “DIGICEL”, under No. 1000590, in class 35 covering “sale of cell phones and accessories”, before the Mexican Institute of Industrial Property, on April 8, 2009.

The disputed domain name <digicel.com> was registered on June 18, 1998.

5. Parties’ Contentions

A. Complainant

The Complainant asserts to be a company incorporated under the laws of St. Lucia.

The Complainant contends that it has been operating since 2001 when it launched its operations in Jamaica and that it offers numerous media for its subscribers to add air time credit to their mobile phones. In this connection, the Complaint claims that it has several trademark registrations for “DIGICEL” in various countries, which have become well-known.

Moreover, the Complaint also asserts that the Respondent does not have any legitimate rights over the disputed domain name and that Respondent only registered the disputed domain name in order to squat and prevent Digicel Caribbean Limited from benefitting from the disputed domain name.

Finally, the Complainant claims that the Respondent registered the disputed domain name in bad faith and with the purpose of passing off.

B. Respondent

The Respondent claims that it should retain registration and use of the disputed domain name since it has registered the disputed domain name in good faith and for the bona fide offering of goods and services.

The Respondent also claims to have registered the disputed domain name on June 18,1998 and the e-mail address digicel@[...] on November 11, 1999, and that therefore, both registrations were made when the Complainant did not exist.

Moreover, the Respondent asserts to have filed a trademark application for “DIGICEL” on April 8, 2009, before the Mexican Institute of Industrial Property, which is currently in process. In this connection, the Respondent claims that the Complainant does not have any registered trademark rights in Mexico.

Also, the Respondent asserts that the different geographic regions in which the Parties’ companies conduct their business makes impossible any confusion among customers. In this connection, the Respondent asserts that the company Grupo Digicel S.A. de C.V. was incorporated on November 28, 2002 with its principal place of business in La Barca, Jalisco, Mexico.

Furthermore, the Respondent claims that the Complainant’s accusation of squatting proves the bad faith of the Complainant.

Finally, the Respondent also contends that by means of this procedure and cyber attacks the Complainant intends to disrupt the Respondent’s business operations.

6. Discussion and Findings

For a complaint to succeed in a UDRP proceeding, under paragraph 4(a) of the Policy, a complainant must prove that:

(i) the disputed domain name is identical or confusingly similar to a trademark 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.

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

The Panel has taken note of the Complainant’s proposed Supplemental Filings, evidence in support thereof, and the Respondent’s reply thereto. The Panel notes that as a matter of course, parties wishing to submit additional filings should normally first request leave of the panel to do so, but that in any event the Panel has been able to decide the case on the Complaint and Response. (The Panel notes also that contrary to the Respondent’s assertion, none of the Parties engaged in any direct communication with the Panel.)

A. Identical or Confusingly Similar

The Complainant owns several trademark registrations for “DIGICEL”, as noted under Section 4, “Factual Background” above.

The Respondent owns a trademark application for “DIGICEL” in Mexico, as also noted under Section 4, “Factual Background” above.

The disputed domain name <digicel.com> reproduces the trademark “DIGICEL” owned by Complainant.

In view of the foregoing, the Panel finds that the disputed domain name <digicel.com> is identical to the trademarks in which the Complainant has rights, and therefore, the Complainant has succeeded on this first element under the Policy.

B. Rights or Legitimate Interests

According to paragraph 4(a)(ii), the second element that the Complainant must prove is that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Policy in its paragraph 4(c) sets out various ways in which a respondent may demonstrate rights or legitimate interests in a domain name.

Although the Policy states that the complainant must prove each of the elements in paragraph 4(a), it is often observed that it is difficult for a complainant to prove a negative, i.e., that a respondent has no rights or legitimate interests in respect of a domain name. It has therefore become generally accepted under the Policy that, once a complainant has presented a clear prima facie showing of a respondent’s lack of rights or legitimate interests in a domain name, the burden of submitting evidence therefore shifts to the respondent. The respondent must then demonstrate its rights or legitimate interests in a domain name in order to refute the prima facie case.

The Respondent has submitted the following evidence in order to prove its rights and legitimate interests:

- Invoices issued by the Respondent and by the company Grupo Digicel S.A. de C.V. from 1998 to 2012, authorized by the Ministry of Finance in Mexico;

- Deed of Incorporation of Grupo Digicel S.A. de C.V. before the Mexican Secretariat of Commerce dated December 10, 2002;

- Registration of Grupo Digicel S.A. de C.V. before the Mexican Secretariat of Taxes; and

- Permits granted by the Municipality of La Barca, Jalisco, to the Respondent and Grupo Digicel S.A. de C.V from 2000 and 2005-2009.

In view of the above, the Panel finds that the Complainant has failed to comply with the second element required by the Policy.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(a)(iii) of the Policy, the third element that the Complainant must prove is that the disputed domain name has been registered and is being used in bad faith. The Policy, paragraph 4(b), sets out several circumstances which may be treated by the Panel as evidence of the registration and use of a domain name in bad faith.

The disputed domain name was registered in 1998 and the Complainant asserts to have started operations in 2001. Therefore, it is unlikely that the Respondent was aware of the Complainant and his trademarks when he registered the disputed domain name <digicel.com>. The Complainant has failed to prove otherwise.

Moreover, the Complainant has not attempted to explain why it has seemingly not objected to the registration of the disputed domain name for some 11 years.

In addition, the Complainant has not proved to the Panel’s satisfaction that the Respondent registered the disputed domain name for the purpose of passing off its goods and services or to benefit from the Complainant’s goodwill.

Finally, the fact that the disputed domain name currently resolves to a “parking page” does not in itself imply a bad faith registration or use by the Respondent.

Consequently, the Panel finds that the Complainant has failed to comply with the third element required by the Policy.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Miguel B. O’Farrell
Sole Panelist
Date: May 9, 2012