WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Amoena Medizin-Orthopädie-Technik GmbH v. Amoena de Mexico, S.A. de C.V., a/k/a Ortopedia Ortiz, a/k/a 3wLeon, Guadalupe De La Luz Garcia Bravo
Case No. D2012-1144
1. The Parties
Complainant is Amoena Medizin-Orthopädie-Technik GmbH of Raubling, Germany, represented by Bryan Cave, LLP, United States of America.
Respondent is Amoena de Mexico, S.A. de C.V. of Guadalajara, Jalisco, Mexico; a/k/a Ortopedia Ortiz, a/k/a 3wLeon, Guadalupe De La Luz Garcia Bravo of Guanajuato, Leon, Mexico, represented by Alma Evelia Acevedo Trujillo, Mexico.
2. The Domain Name and Registrar
The disputed domain name <amoenamexico.com> is registered with Neubox Internet S.A. de C.V.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 4, 2012. On June 5, 2012, the Center transmitted by email to Neubox Internet S.A. de C.V. a request for registrar verification in connection with the disputed domain name. On June 6, 2012 and June 20, 2012, Neubox Internet S.A. de C.V. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On June 14, 2012, the Center informed the parties, in both Spanish and English, that the language of the registration agreement for the disputed domain name is Spanish, and requesting the parties to provide comments on the language of proceeding. On June 16, 2012, Complainant sent a request for English to be the language of proceedings. Respondent has not filed any language submissions or objections to the Complainant’s language request.
The Center verified that the 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 Respondent of the Complaint, and the proceedings commenced on June 22, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 12, 2012. The Response was filed with the Center on July 12, 2012.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on July 23, 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.
4. Factual Background
Complainant is a manufacturer of breast prosthetics and breast care related products. Complainant was created in 1975 and made its first commercial sale under the AMOENA trademark in 1976.
Complainant has used the AMOENA trademark since at least 1976. Complainant owns numerous trademarks registration for its AMOENA trademark including in Germany, the United States, the European Union and International Registrations covering numerous countries around the world.
Respondent was Complainant’s distributor in Mexico from October 1, 2008 to December 12, 2009.
The disputed domain name <amoenamexico.com> was registered in the name of the Respondent on September 11, 2008.
5. Parties’ Contentions
Complainant states that Respondent was originally known as “Ortopedia Ortiz” and in the early 2000’s was appointed to be Complainant’s distributor in Mexico. In connection with its role as Complainant’s distributor in Mexico, Respondent incorporated as Amoena de Mexico SA de CV. On September 11, 2008 Respondent registered the disputed domain name for use in carrying out its duties to distribute Complainant’s products in Mexico and created and used a website at the disputed domain name for this precise purpose.
The Distribution Agreement was terminated in December 2009. Once terminated, Respondent lost all authorization to use the AMOENA trademarks and was required to transfer the disputed domain name <amoenamexico.com> to Complainant. According to Complainant, Respondent has breached its contractual obligations and is infringing the AMOENA trademarks by continuing to maintain the disputed domain name and use the AMOENA name and trademarks to sell directly competing products to unsuspecting customers and to the detriment of Amoena. According to the Complainant, Respondent offers the same type of breast prosthetic and related breast care products as the Amoena brand products. Complainant argues that Respondent is deceiving customers because it does not sell Amoena products but instead sells the directly competing products of an Amoena competitor, American Breast Care L.P., without telling customers or potential customers of this “bait and switch”. Respondent does so in part by linking to another website “www.americanbreastcaremexico.com”, which is also registered using the “3wLeon” pseudonym, and which is used to sell American Breast Care L.P. competing products. Respondent is doing all this without Amoena’s authorization.
Complainant argues that the disputed domain name was registered for the ultimate benefit of Amoena to aid in the sales of its AMOENA brand products in Mexico. Complainant further argues that the parties then entered into an exclusive Distribution Agreement (the Distribution Agreement) that superseded all former distribution agreements between the parties.
Complainant states that Respondent also recognized property rights in the trademarks. The Distribution Agreement also required Respondent to cease using the AMOENA trademarks and any registration upon termination of the Distribution Agreement with all property rights to any registration transferring to Complainant.
The disputed domain name is identical to the trademarks in which Complainant has rights. The disputed domain name wholly incorporated and is confusingly similar to Complainant’s trademark.
Complainant argues that Respondent has no current rights or legitimate interests in respect of the disputed domain name. Respondent continues to maintain the disputed domain name and has renewed its registration after termination of the agreement. While Respondent at one time had contractual authorization to use the AMOENA trademarks and the disputed domain name in its role as Complainant’s Mexican distributor, Respondent’s status as distributor was terminated for cause in December 2009.
Complainant also argues that the disputed domain name was registered and is being used in bad faith. Respondent is in direct violation of at least Policy paragraphs 4(b)(ii)(iii) and (iv).
The registration by Respondent of the disputed domain name became no longer bona fide when Respondent failed to surrender the disputed domain name at the end of a contractual relationship permitting use of the trademark. Complainant cites in this respect the cases: Exel Oyj v. KH Trading, WIPO Case No. D2004-0433 citing UVA Solar GmbH & Co Kg v. Mads Kragh, WIPO Case No. D2001-0373 and others.
Complainant requests the transfer of the disputed domain name.
Complainant also specifically requests that English be the language of these proceedings.
Respondent states that Amoena de Mexico Sociedad Anonima de Capital Variable is a commercial entity incorporated under Mexican law in December 3, 1998 with the purposes of buying and selling products related to medical implants. On September 11, 2008, Respondent registered the disputed domain name <amoenamexico.com>. The disputed domain name has been renewed every year since then. Respondent states that they have never received any notice with respect to this controversy in relation to the disputed domain name.
Respondent asserts that:
- they have not requested any authorization from any third party to register and use the disputed domain name because “amoenamexico.com” is a term that was created by Respondent and that is not identified by Complainant;
- there is no identity nor similarity between “amoenamexico.com” and AMOENA;
- there is no confusion between “amoenamexico.com” and AMOENA;
- Respondent has been recognized in all its commercial relations by the disputed domain name <amoenamexico.com> and Respondent has not registered any trademark related to AMOENA because they recognize that the term is a registered trademark;
- it is the intention of Respondent to continue using the disputed domain name because it is the trade name of its corporation, an entity that was created with the purpose of selling all kind of medical products including breast prosthetics of any trademark.
Respondent recognizes that AMOENA is Complainant’s trademark and Respondent was Complainant’s exclusive distributor in Mexico. However, Respondent states that the name of its corporation is “Amoena de Mexico” and that is was duly incorporated according to Mexican law on December 3, 1998 for the purposes of selling medical products.
Respondent states that section 7 of the Distribution Agreement authorizes Respondent to make all necessary registrations in its own name and that Respondent shall have all property rights over such products. According to Respondent, this section does not mention in any of its paragraphs the duty to return back to Complainant the disputed domain name.
Respondent had already registered the disputed domain name on September 11, 2008. The disputed domain name was registered and obtained before entering into the Distribution Agreement with Complainant.
The only specific duty imposed on Respondent in the Distribution Agreement was not to manufacture similar products as the ones produced by Complainant or to distribute its products.
Respondent states that by naming its Mexican corporation as “Amoena de Mexico” it has obtained certain legal rights to the disputed domain name that would preclude transfer.
There is no confusion because an Internet search for ”amoena” would always put in first place Complainant’s website.
Respondent also states that the rights over the disputed domain name were assigned to Respondent by section 16 of the Distribution Agreement.
6. Discussion and Findings
A. Language of proceedings
On June 16, 2012, Complainant sent a request for English to be the language of proceedings. Complainant set forth its arguments in section IV of the Complaint.
The Respondent has not filed any language submissions or objections to Complainant’s language request.
According to Paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise. The spirit of Paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the parties level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors. See Groupe Industriel Marcel Dassault, Dassault Aviation v. Mr. Minwoo Park, WIPO Case No. D2003-0989. And it is recognized that the UDRP should provide an cost-efficient and expeditious avenue for resolution of domain name disputes. See Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical applicance co. ltd., WIPO Case No. D2008-0293.
In cases where the use of the English language in the proceedings would not be prejudicial to the interests of Respondent, whereas it would be a disadvantage for complainant to be forced to translate the complaint, panels often decide to use the English language in the proceedings. See The Dow Chemical Company v. Hwang Yiyi, WIPO Case No. D2008-1276. This is the case where the Distribution Agreement signed by both parties is in English.
Paragraph 11(a) of the Rules reserves to the Panel the authority to determine the proper language of the proceeding. In view of all the above circumstances, the Complainant's request, and the lack of opposition from Respondent, the Panel finds that there is no prejudice caused to the Respondent if the proceedings are conducted in English. The selection of the Spanish language as the language of the proceeding in the present case would be a burden to the Complainant in terms of translation expenses, and would also cause undue delay in the proceedings.
The Panel determines that English shall be the language of the proceeding and shall therefore render the decision in English in accordance with paragraph 11 of the Rules.
B. Substantive Elements of the Policy
Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the grounds 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.
Under Paragraph 4(a) of the Policy, Complainant must prove each of the following:
(i) the disputed domain name is identical or confusingly similar to Complainants’ trademark or service mark; and
(ii) 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.
C. Identical or Confusingly Similar
Complaint must establish two things to meet the requirements of paragraph 4(a)(i) of the Policy: whether it has rights in a mark, and, if so, whether the disputed domain name is identical or confusingly similar to it.
Complainant has trademarks rights over the term “Amoena”.
The disputed domain name <amoenamexico.com> incorporates the word “Amoena” which constitutes the Complainant’s trademark and trade name.
The only difference between the disputed domain name and Complainant’s trademark is the addition of the word “mexico”. The addition of the mentioned word, which is a country name, does not add a distinctive element to the disputed domain name and does not render it dissimilar to Complainant’s trademark. Moreover, such addition increases the likelihood of confusion between the disputed domain name and Complainant’s trademark, because the term “mexico” will be considered by Internet users as a simple indication of a place where the Complainant should be active. See Osram AG v. Execom, WIPO Case No. D2012-0948; Inter Ikea Systems B.V. v. Luis Fernando Kosonoy Michel, WIPO Case No. D2011-1971 and Automobili Lamborghini Holding S.p.A. v. George Salazar / Jorge Salazar, WIPO Case No. D2010-0708..
Therefore the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark.
D. Rights or Legitimate Interests
According to paragraph 4 (c) of the Policy, the following circumstances, if proved, demonstrate Respondent’s rights or legitimate interests in the disputed domain name:
(i) Respondent used or demonstrably prepared to use the disputed domain name or corresponding names in connection with a bona fide offering of goods or services prior to notice of the dispute;
(ii) Respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has not acquired trademark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s trademarks.
There is no apparent legitimate justification for Respondent’s current registration and use of the disputed domain name which is confusingly similar to Complainant’s trademark.
Respondent argues that section 7 of the Distribution Agreement authorizes Respondent to make all necessary registrations in its own name and that Respondent shall have all property rights over such products. According to Respondent, this section does not mention in any of its paragraphs the duty to return back to Complainant the disputed domain name.
Respondent was Complainant’s distributor. The terms of the Distribution Agreement are clear that any rights to use the Complainant’s intellectual property ceased on termination of the Distribution Agreement.
The Exclusive Distribution Agreement submitted by Complainant as Annex 2 of the Complaint provides in section 16 that “At the effective date of termination at the latest Distributor shall cease using the Trademarks and Information. Any property rights to all registration that are held by the Distributor will transfer to Amoena. Distributor is not entitled to hold any lien on such information and Registration…”.
Section 7 of the Distribution Agreement deals with what is generally known as marketing authorizations, that is Registration of Products in the Territory. Registrations are defined in the Distribution Agreement as all necessary approvals required by the authorities in the Territory for the legal marketing of products. No right to retain the disputed domain name can be derived from this clause of the agreement.
There is no doubt that the termination of the agreement exhausted any bona fide registration of the disputed domain name that Respondent may have had. However, after the expiration of the Distribution Agreement, the disputed domain name was renewed in 2010 and 2011.
In the circumstances, the Panel takes the view that Respondent did have rights and legitimate interests in respect of the disputed domain name in issue but only for the duration of the distributorship of Complainant's AMOENA products. That distributorship having come to an end, Respondent no longer has any rights or legitimate interests in respect of the domain name. The Complainant, therefore, succeeds in establishing the second requirement of paragraph 4(a) of the Policy.
E. Registered and Used in Bad Faith
Paragraph 4 (a)(iii) of the Policy requires Complainant to prove that Respondent registered and has used the disputed domain name in bad faith. Paragraph 4 (b) of the Policy non-exhaustively lists circumstances which, if found by the Panel to be present, constitute evidence that Respondent has registered and used the disputed domain name in bad faith:
(i) Circumstances indicating that Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the registration of the disputed domain name to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain name; or
(ii) Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the Marks in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s Marks as to the source, sponsorship, affiliation or endorsement of its website or location or of a product or service on its website or location.
It is clear from the evidence of the case file that, at least at the time of registration of the disputed domain name, on September 11, 2008, Respondent knew of Complainant’s trademark AMOENA.
Complainant has stated - and Respondent has not denied - that Respondent was originally known as Ortopedia Ortiz and that in the early 2000’s Respondent was appointed by Amoena to be its distributor in Mexico. In connection with its role as Amoena distributor in Mexico, Respondent distributed Complainant’s products.
Several days after the registration of the disputed domain name - October 1, 2008 - both parties entered into a Distribution Agreement for AMOENA products.
In addition, Respondent entity AMOENA DE MEXICO S.A. de C.V. was incorporated on February 2, 1999 by public deed n. 2810 signed by notary Sergio Alejandro Lopez Rivera. The purpose of that corporation was the sale and distribution of medical implements, medical tools and prosthesis, i.e., products similar to Complainant’s products.
The use of the disputed domain name during the Distribution Agreement may be considered as a bona fide. However, any rights that Respondent may have had under the Distribution Agreement were extinguished on December 12, 2009. Respondent has refused to transfer the disputed domain name to Complainant despite a request to do so. In view of the Panel, this is evidence of bad faith. See e.g. UVA Solar GmbH & Co K.G. v. Mads Kragh, WIPO Case No. D2001-0373; Exel Oyj v. KH Trading, Inc., WIPO Case No. D2004-0433 and R&M Italia SpA, Tycon Technoglass Srl v. EnQuip Technologies Group, Inc., WIPO Case No. D2007-1477.
That Respondent may originally have registered the disputed domain name without bad faith does not necessarily preclude Complainant from succeeding under the Policy where for example there is continuing maintenance of a registration combined with continuing abusive use. This Panel is persuaded by cases such as Ville de Paris v. Jeff Walter, WIPO Case No. D2009-1278 and Zerospam Security Inc. v. Internet Retail Billing, Inc., Host Master, WIPO Case No. D2009-1276, that what may originally have been good faith registration followed by bad faith use may in certain cases still permit complainant to carry its burden under the Policy (e.g. when in light of all the circumstances of the case, it may still be found that respondent was acting in bad faith). This conclusion has been applied also to cases were a former distributor retained the domain name after termination of the distribution agreement (Samsung Electronics Co., Ltd v. Pimser Electronics Ltd. (Samsung Turkey), WIPO Case No. D2009-1630), as in this case.
In this case, Respondent is using the disputed domain name that it admits is confusingly similar to Complainant's trademark. Respondent does not have any trademark registered under such name. Respondent also admits that it is selling several brands of products in the same field of Complainant. In fact, as Complainant points out, the disputed domain name contains a link to “www.americanbreastcaremexico.com”, a website owned by Respondent where competing products are being offered. Thus, the facts of this case fall under paragraph 4(b)(iv) of the Policy.
Furthermore, Respondent has had no rights or legitimate interests in the disputed domain name. Thus, in this Panel’s view, Respondent's continued use was at the very least to attract Internet users to its website, which contains products of Complainant's competitors, for commercial gain. As further evidence of bad faith, Respondent failed to cease using the disputed domain name after termination of the Agreement in December 2009 and after receiving Complainant's cease and desist letter requesting that it do so.
The Panel therefore holds that Complainant has established paragraph 4(a)(iii) of the Policy.
In the circumstances, the Panel finds that the disputed domain name was registered and is being used in bad faith by the Respondent and that, consequently, the Complainant succeeds in meeting the requirements of paragraph 4a(iii) of 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 disputed domain name <amoenamexico.com> be transferred to Complainant.
Pablo A. Palazzi
Date: August 6, 2012