World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

TV Azteca S.A.B. de C.V. v. Johny Romero (aka Johny Alfonso Romero Rocha)/ Total Play Inc.

Case No. D2012-2533

1. The Parties

Complainant is TV Azteca S.A.B. De C.V. of México D.F., Mexico, represented by Cavelier Abogados, Colombia.

Respondents are Johny Romero (aka Johny Alfonso Romero Rocha) from Barranquilla, Colombia, and Total Play Inc. of United States of America, represented by LegalForce RAPC Worldwide, United States.

2. The Domain Names and Registrars

The disputed domain names <total-play.co> and <total-play.com> are registered with GoDaddy.com, LLC (the “First Registrar”), while the disputed domain names <mitotalplay.com.co>, <total-play.com.co> and <totalplay.com.co> are registered with Central Comercializadora de Internet S.A.S (the “Second Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2012. On December 24, 2012, the Center transmitted by email to both Registrars a request for registrar verification in connection with the disputed domain names. On December 24, 2012, the First Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. On December 29, 2012, the Second Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

The Center sent an email communication to Complainant on January 11, 2013 providing the registrant and contact information disclosed by the Registrar, and requesting the Complainant to 1) submit an amendment to the Complaint to add the registrant of record for the disputed domain names <total-play.co> and <total-play.com> and demonstrate that both registrants are, in fact, the same entity or that the disputed domain names are under common control or 2) file a separate Complaint in relation to the domain names <total-play.co> and <total-play.com>, and file a short amendment to drop said separately-filed domain names from the current Complaint. On January 11, 2013, the Center also received several informal communications from Total Play Inc..

Complainant filed an amended Complaint on January 15, 2013, indicating the connection or relationship between the disputed domain names and their listed domain name holders. On January 16, 2013, the Center communicated to the parties that the language of the registration agreements for the disputed domain names was English and Spanish. On January 17, 2013, the Center sent an email communication to Complainant inviting it to remedy several deficiencies found in the Complaint. Complainant filed an amended Complaint on January 18, 2013. On the same date and in response to the language of proceedings email communication by the Center, Complainant filed the Complaint in English. Respondents did not submit any comments in this respect.

The Center verified that the Complaint together with the amended Complaints 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 Respondents of the Complaint, and the proceedings commenced on January 31, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response February 20, 2013. A Response was filed by Total Play Inc. with the Center on February 20, 2013 with respect to all disputed domain names.

The Center appointed Pablo Palazzi, Alvaro Loureiro Oliveira and David W. Quinto as panelists in this matter on March 18, 2013. The Panel finds that it was properly constituted. Each member of 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 TV Azteca S.A.B. de C.V. is a Mexican telecommunications company that provides services related to radio, television and Internet in Mexico and around the world. Complainant operates the two television networks, Azteca 7 and Azteca Trece with affiliated stations in most cities in Mexico and the Americas.

In November 2011, Complainant was awarded a license in Colombia to operate the national fiber optic with the aim of providing broadband Internet service under the trademark TOTALPLAY.

The disputed domain names <total-play.com.co>, <totalplay.com.co> and <mitotalplay.com.co> were registered on November 5, 14 and 17, 2011 respectively. The disputed domain names <total-play.co> and <total-play.com> were registered on September 8, 2012, and December 21, 2012 respectively.

5. Parties’ Contentions

A. Complainant

Complainant alleges that it is the owner in Mexico of 206 registrations for the trademark TOTALPLAY in several classes. Complainant has also applied for these trademarks in Colombia.

In addition, Complainant states that it owns registrations of the domain names <totalplay.com>, <mitotalplay.com.mx> and <totalplay.com.mx> where the TOTALPLAY trademark is promoted in regards to Internet, interactive TV and optical fiber services.

Complainant’s registration of its trademarks in Mexico predates Respondents’ registration of the disputed domain names <total-play.com.co>, <totalplay.com.co> and <mitotalplay.com.co>. The disputed domain names were registered respectively on November 5, 14 and 17, 2011.

Complainant claims the disputed domain names are confusingly similar to the TOTALPLAY trademark.

Complainant states that prior to learning of the entry into Colombia of Complainant TV Azteca with the TOTALPLAY trademarks, as reported in several news media on November 4, 2011, Respondents were not known in Colombia for a name consisting in whole or in part of the TOTALPLAY trademarks. The disputed domain names were registered only after the entry of Complainant in Colombia was announced. Thus, Respondents do not have any legitimate interest in the disputed domain names.

According to the Complaint, Respondents are not using the disputed domain names to offer goods or services in good faith. The disputed domain names are a façade to conceal their lack or legitimate rights of interest over them.

Complainant asserts that the disputed domain names were registered and are being used in bad faith. The disputed domain names were registered with the purposes of selling, renting, or transferring them to Complainant for an amount that exceeds the documented costs directly related to the disputed domain names.

According to the Complaint, Respondent Johny Alfonso Romero Rocha tried to sell the disputed domain names one month after registering them, and following a first offer made by a representative of the Complainant. The required sum of USD 50,000 for the domain names exceeds the cost directly related to the registration of the disputed domain names and is an act of bad faith.

In addition, Complainant stated that registration of multiple domain names with the same trademarks as that of the Complainant is a registration in bad faith. Complainant cites the case ECOPETROL AMERICA INC. v. JOHNY ALFONSO ROMERO ROCHA, NAF Claim No. 1450566, as an evidence of the same Respondent incurring in a pattern of registration of domain names that incorporate famous trademarks.

According to the Complaint, another sign of bad faith is the use of a privacy proxy service in the registration of some of the disputed domain names.

Complainant requests as a remedy the transfer of the disputed domain names.

B. Respondents

The Response was filed by Total Play Inc. with respect to all the disputed domain names, In the Response, under the heading “Respondent’s contact details”, it is indicated “name: Johny Romero and/or Total Play Inc.”

Respondents state that Complainant does not have rights to bar legitimate uses in commerce for those areas that are non-conflicting with that of Complainant. Respondents attached United States registration (number 4243480)for TOTALPLAY. Respondents also state they have a Colombian trademark registration for TOTALPLAY.

Respondents state that they have legitimate rights to use the domain name for their goods and services by virtue of its United States registration for TOTALPLAY for goods in international class 25. Respondents also argue that they were using the TOTALPLAY trademark in commerce since as early as October 2011 in the United States. Respondents registration of their domain names in the present proceeding were to promote their legitimate use in commerce for its clothing line, with no relation to Complainant’s products or services.

According to Respondents, Complainant claims that Respondents offer to sell the domain names for USD 50,000 was in bad faith, but it fails to take into account that Respondents have been using its trademark in commerce in the United States and had built up good will behind the name prior to Complainant media foray. Respondents would only sell the domain name and as a result give up the good will of its business for an amount that would make financial sense to Respondents considering the long terms business goals of a successful clothing line.

Respondents state that the offer was not in bad faith because Complainant’s representative real identity was not disclosed. In addition, Respondents state that the offer did not include only the cost of registration but also took into account other factors such as legal and government fees to file trademarks both in the United States and abroad, the goodwill behind their clothing company, and cost to create inventory, merchandise branding and clothing specimen/tags for retail sales.

Respondents submit as Annex 4 photos of TOTALPLAY clothing specimens to show their legitimate use in commerce, with branding, clothing tags, examples of articles clothing and retail ready clothing.

Respondents state that at the date of Complainant notice to Respondents about its alleged rights, Respondents had already obtained a registration of its United States trademark, which precludes Complainant claim that Respondents simply held the domain name with an intention to block Complainant use of the domain names.

Respondents deny the use of a fake address. According to Respondents, the address listed in the United States is a listed address of Respondents United States operations and thus is not fraudulent or incorrect.

According to Respondents, the registration of two or three domain names does not constitute a pattern of bad faith registration for purposes of section 4(b)(ii) of the Policy.

Finally, Respondents state that their use of data and privacy protection services are simply an effort to not authorize third party contacts for spam or marketing.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

A. Identity of the Respondents

An important preliminary issue in this case concerns the identity of Respondents.

The Complaint was filed with the Center on December 21, 2012, in Spanish. The only named Respondent at that time was Johnny Alfonso Romero Rocha.

On December 24, 2012, the Center transmitted by email to both Registrars a request for registrar verification in connection with the disputed domain names.

GoDaddy.com, LLC informed the Center that the registrant of the domain names <total-play.co> and <total-play.com> was Total Play Inc. and not Johny Alfonso Romero Rocha.

Central Comercializadora de Internet S.A.S. transmitted by email to the Center its verification response confirming that Johny Romero is listed as the registrant and providing the contact details for the disputed domain names <mitotalplay.com.co>, <total-play.com.co> and <totalplay.com.co>. The contact details informed for these domains where the following:

JOHNY ROMERO

[…]@totalplay.biz

TOTAL PLAY INC

The Center sent an email communication to the Complainant providing the registrant and contact information disclosed by the Registrar, and requesting the Complainant to submit an amendment to the Complaint to 1) add the registrant of record for the disputed domain names <total-play.co> and <total-play.com> and to demonstrate that both registrants are, in fact, the same entity or that the disputed domain names are under common control or 2) file a separate Complaint in relation to the domain names <total-play.co> and <total-play.com>, and file a short amendment to drop said separately-filed domain names from the current Complaint.

On January 11, 2013, the Center received an informal communication from Respondent Total Play Inc. requesting to receive the text of the Complaint for review and stating that the owner of the five domain names was Total Play Inc. On the same date, Johnny Alfonso Romero Rocha sent an email communication to the Center expressing that “Johnny Alfonso Romero Rocha is not the owner of the disputed domain names” and requesting not to receive any more email communications related to this matter to his electronic address.

Complainant filed an amended Complaint on January 15, 2013, indicating the connection or relationship between the disputed domain names and their listed domain name holders. According to the Complaint, Johny Alfonso Romero Rocha and Total Play Inc. is the same person. Thus, the amended Complaint in English was filed against both Johny Alfonso Romero Rocha and Total Play Inc.

With respect to the identity of Respondents, the Panel notes that Johny Romero is mentioned as registrant in the WhoIs record of three of the five disputed domain names. In addition, Respondents have attached the full email communication between Respondents and a Complainant’s employee as Annex 5. In that email communication, the person who presents himself as the owner of three of the disputed domain names and offers to sell them is Johny Alfonso Romero Rocha. Johny Romero appears also as administrative and technical contact in three of the disputed domain names, where Total Play Inc. is the registrant. In addition, the five disputed domain names currently have the same identical content. Furthermore, in the Response, Respondents provided the following information with respect to contact details: “Johny Romero and/or TOTAL PLAY INC.”.

Thus, the Panel is further satisfied that the disputed domain names registered by Johny Alfonso Romero Rocha (aka Johny Romero) and Total Play Inc. are all subject to common control and that it is appropriate, equitable and fair to all parties involved to consolidate this proceeding.

B. Language of the proceedings

The Center communicated to the parties that the language of the registration agreements is English and Spanish. On January 18, 2013 and in response to the language of proceedings email communication by the Center, Complainant filed the amended Complaint in English. Respondents did not submit any comments in this respect. However, Respondents answered the Complaint in English.

Complainant requested that Spanish be the language of the proceeding taking into account that (i) Spanish is the native language of the Parties, (ii) the respective domiciles of the parties are in Mexico and Colombia, where Spanish is the official language, and (iii) the registration agreements of the registrars are available in Spanish on the Internet.

The language of the registration agreements of the disputed domain names is both English and Spanish. However, in light of the consolidation of the five disputed domain names in one case, the fact that both parties were able to file their Complaint and Response in English, the Panel decides that English is the language of the proceedings.

C. Identical or Confusingly Similar

Complainant is the owner of several trademark registrations for TOTALPLAY in Mexico. Respondents are not contesting this issue, so the Panel accepts that the registered trademarks for TOTALPLAY are valid and subsisting.

The disputed domain names <mitotalplay.com.co>, <total-play.com.co>, <totalplay.com.co>, <total-play.co> and <total-play.com> are confusingly similar to Complainant’s trademark.

For the purpose of comparison of the disputed domain names with the trademark, the extensions “.com” and “.co”, can be ignored as trivial. The same can be said of the hyphen “-” available in three of the five disputed domain names.

Finally, one of the disputed domain names contains the prefix “mi”. The Panel notes that Complainant has a similar domain name in use that starts with the “mi” prefix (see <mitotalplay.com.mx>) used to provide information and configuration of the service to its clients in Mexico. The disputed domain name <mitotalplay.com.co> is also confusingly similar to Complainant’s trademark and its domain name, <mitotalplay.com.mx>.

Respondents allege that Complainant has not registered the trademark TOTALPLAY in class 25 (for clothing products) and that Respondents own such trademark registration in the United States and in Colombia.

Under the Policy, if the Complainant owns a trademark, then it generally satisfies the threshold requirement under the first element. The location of the trademark, its date of registration, and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions Second Edition (“WIPO Overview 2.0”), paragraph 1.1.

Accordingly, the Panel finds that the Complainant has met the first requirement of the Policy.

D. Rights or Legitimate Interests

The following are examples of circumstances where a respondent may have rights or legitimate interests in a contested domain name:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the 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 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 domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c)).

Once a prima facie case is made by a complainant, it becomes the respondent’s burden to demonstrate its rights or legitimate interests. If it fails to do so, the Complainant is deemed to have satisfied to paragraph 4(a)(ii) of the Policy. See, e.g., paragraph 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

Respondents argue that they have a valid trademark registration for TOTALPLAY in Colombia and the United States.

According to the record (Annex 1 of the Response), the trademark TOTALPLAY is registered in the United States since November 13, 2012 for class 25 in the name of a company called GripGuard Inc.

The Response does not provide a copy of the Colombian trademark registration. The only document attached as Annex 2 of the Response is a decision from the Colombian trademark office dated February 11, 2013, rejecting Complainant’s registration for the trademark TOTALPLAY in class 24. Nonetheless, the Panel visited the website for the Colombian trademark office and was able to verify that the trademark TOTALPLAY for class 25 is also registered in the name of GripGuard Inc.

The decision from the Colombian trademark office dated February 11, 2013, rejecting the registration of Complainant’s application for TOTALPLAY trademark in class 24 addressed two grounds: the TOTALPLAY trademark owned by GripGuard Inc. and the Totalplay tradename. The Colombian Trademark Office decision however, was based only on the TOTALPLAY trademark. With respect to the Totalplay tradename, the Colombian trademark office stated that the mere deposit of a tradename in the office does not constitute proof of its use and that GripGuard Inc. had not proved use of the Totalplay tradename.

The Panel notes that the listed owner of the trademark registration referred to by Respondents is GripGuard Inc., a third party in this proceeding. There is no mention of such company in the WhoIs registration of any of the disputed domain names, or in the Response, and Respondents have not stated that they have a license or any other valid title to use the trademark TOTALPLAY from such company. Thus, the argument that Respondents have a valid trademark is not supported by the record and cannot be accepted by the Panel.

In sum, given that there is no demonstrated relationship between Gripguard Inc. and Respondents, it is the view of the Panel that Respondents do not have registered trademark rights over the term TOTALPLAY, which can form the basis for claiming rights on legitimate interests in the disputed domain names.

The Panel notes that Johny Alfonso Romero Rocha may arguably be associated with GripGuard Inc., the owner of the two trademark registrations referred to by Respondents. Indeed, it appears from Annex 2 of the Response, that Johny Alfonso Romero Rocha might have acted as the representative of GripGuard Inc. at some point in the past. In the Panel’s view, this however is not sufficient to conclude that Respondents in this case have rights or legitimate interests in the disputed domain names for the purpose of the second element of the UDRP. Indeed, the Panel notes that the registration of the disputed domain name <totalplay.com.co> occurred on November 5, 2011, only one day after it became public knowledge that Complainant was entering the Colombian market to operate the national fiber optic with the aim of providing broadband Internet service under the trademark TOTALPLAY and that all the other disputed domain names were also registered after this information became public. Panels have generally declined to find respondent rights or legitimate interests in a domain name on the basis of a corresponding trademark registration where the overall circumstances demonstrate that such trademark was obtained primarily to circumvent the application of the UDRP, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, 2.7 (“WIPO Overview 2.0“). In light of the above, even if the Panel were to associate Respondents with GripGuard Inc.’s trademarks, this would not suffice given the circumstances described above, to conclude that Respondents have rights or legitimate interests in the disputed domain names.

In relation to the existence and activity of Respondents under the name Totalplay, the Panel notes the following facts:

- In November 2011, Complainant was awarded a license to operate a national fiber optic for broadband Internet service in Colombia;

- This was widely publicized in several newspapers in Colombia on November 4, 2011. There are also newspapers clips dated October 25, 2011 that identified Totalplay as the likely candidate to win the public tender for fiber optic.

- The disputed domain names were registered on November 5, 14 and 17, 2011, and then on September 8, 2012, and December 21, 2012.

- On December 12, 2011 Respondent Johny Alfonso Romero Rocha received an email communication from a representative of Complainant (without disclosing identity) asking if he was willing to sell the domain name <totalplay.com.co>. Several emails followed up. Respondent first stated that he was using the domain name to sell kits of machines and accessories. The Panel notes that such use would be inconsistent with a class 25 registration. He added that he had already been successful and obtained two sales for USD 25,000 and USD 125, 000 respectively. He offered also to sell the social media accounts associated with the domain name. Finally, Respondent stated that he had additionally registered <total-play.com.co> and <mitotalplay.com.co> and offered to sell all the domain names for the sum of USD 50,000. In the Response, Respondents state that they have a successful clothing business and that they have been using the trademark TOTALPLAY in commerce since October 2011.

The assertions are contradictory and lack any material evidence or supporting documentation. Respondents pretend to offer clothes, but they have not provided any evidence of a physical location or online ordering system, actual sales, invoices, expenditures, clients or any other demonstrable preparations for a serious and credible business. The assertions of a successful business and goodwill are not supported by any kind of evidence, except some photos of shirts bearing the “Totalplay” logo. The photographies of trousers on the websites of the disputed domain name do not even have the trademark.

The consensus view is that the general standard of proof under the UDRP is "on balance" - often expressed as the "balance of probabilities" or "preponderance of the evidence" standard. Under this standard, an asserting party would typically need to establish that it is more likely than not that the claimed fact is true. (see, paragraph 4.7, WIPO Overview 2.0). The Panel finds that the criteria enunciated in paragraph 4(c) criteria of the Policy have not been demonstrated and that without any evidence of their alleged rights or legitimate interests in the disputed domain names, Respondents have not rebutted Complainant’s prima facie case that Respondents lack rights or legitimate interests.

The Panel therefore finds that the Complainant has satisfied what was required of it under Paragraph 4(a)(ii) of the Policy.

E. Registered and Used in Bad Faith

According to paragraph 4(b) of the Policy, the following circumstances shall be evidence of registration and use in bad faith:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

Each of those circumstances requires, or at least implies, that a respondent must have known, or ought to have known, of the complainant or its trademark rights and that the domain name was registered with those rights in mind.

In light of all the evidence available, it is the view of the Panel that the disputed domain names were registered with the purposes of selling, renting, or transferring them to the Complainant for an amount that exceeds the documented costs directly related to the domain name.

The following circumstances are taken into account:

- Respondents registered five domain names comprising Complainant’s trademarks.

- The disputed domain names were registered after the public announcement in several newspapers that Complainant was awarded a public tender to install fiber optic in Colombia.

- Respondents registered the disputed domain name <mitotalplay.com.co> on November 17, 2011. This disputed domain name contains the same prefix “mi” that Complainant is using in the domain name <mitotalplay.com.mx>, which is used by Complaint to provide to its clients access to information about its service and to provide them personalized configuration in Mexico.

- Respondents have provided contradictory explanations of what they are doing with the domain name.

- Respondent Johny Alfonso Romero Rocha has already been a party to other proceedings in which he was found to have acted in bad faith in registering several variations of domain names including the trademark ECOPETROL. This establishes a pattern of conduct.

- Respondent Johny Alfonso Romero Rocha offered to sell the disputed domain names for a sum exceeding out-of-pocket expenses.

In November 2011, Complainant was awarded a license to operate the national fiber optic system of Colombia under the trademark TOTALPLAY. This was widely publicized by the Colombian newspapers “Portafolio”, “Semana” and “El Espectador” on November 4, 2011. The documents attached to the Complaint also contain two notes published on October 25, 2011, reflecting that some newspapers were already mentioning the possible entry into Colombia of the trademark TOTALPLAY. Respondents registered the first disputed domain name on November 5, 2011, just one day after it became public knowledge that TOTALPLAY was entering the Colombian market. Then on December 12, 2011, a representative of Complainant sent an email to Respondent Johny Alfonso Romero Rocha inquiring if he would sell the disputed domain names. He offered to sell them for USD 50,000 and mentioned a successful business selling machines and accessories. The Panel notes that Respondents registered the disputed domain names before GripGuard Inc. registered its trademarks in the United States and in Colombia. The Panel also notes that the offer to sell the disputed domain names made by Johny Alfonso Romero Rocha, was made before said trademarks were registered.

Respondent Johny Alfonso Romero Rocha was thus interested in selling the disputed domain names within days of registering them. In the view of this Panel, it is surprising that Respondent Johny Alfonso Romero Rocha was purportedly using them to sell machines and accessories. No evidence of this was offered in the Response. It is also suggestive that after a few emails with the representative, Respondent Johny Alfonso Romero Rocha also offered to sell two other domain names containing the trademark TOTALPLAY. There is no explanation why Respondents offered an unknown person a domain name containing the prefix “mi” with the trademark TOTALPLAY and the ccTLD for Colombia “.co”. The only plausible answer is that Respondent Johny Alfonso Romero Rocha knew he was dealing with Complainant’s representative and was aware of the importance of the disputed domain names for Complainant’s new business in Colombia.

With respect to the offer to sell, Respondents argue that the sum includes all the investment and goodwill of Complainant in a successful clothing business. Such bare assertion lacks any evidence of the investment, goodwill, existing clientele or invoices. As already stated in the previous section of this decision, Respondents have offered only conclusory assertions but not evidence to support them.

With respect to the application of the pattern of registering domain names forbidden by paragraph 4(b)(ii) of the Policy, Respondents state that “[…] Panels have held that the registration of two or three names does not constitute a pattern of bad faith registration for purposes of the 4(b)(ii) requirement”.

The Panel disagrees. The consensus view states that a pattern of conduct can involve multiple UDRP cases with similar fact patterns or a single case involving the registration of multiple domain names similar to a trademark (see Paragraph 3.3, WIPO Overview 2.0).

In this case, Complainant was awarded a tender to operate in Colombia. Just days after it was publicly announced, Respondents registered the disputed domain names. It is the view of the Panel that Respondents registered the disputed domain names in order to prevent the owner of the trademarks from reflecting the mark in a corresponding domain name. The Panel notes that it is not casual that of the five disputed domain names, four of them relate to the “.co” ccTLD that relates to Colombia, where Complainant has been granted a license to operate.

The Panel also notes that the fact pattern of this case is similar to that of the Ecopetrol case, cited by Complaint (see Ecopetrol America Inc. v. JOHNY ALFONSO ROMERO ROCHA, NAF Claim No. 1450566). There, Respondent Johny Alfonso Romero Rocha registered a package of domain names and social media accounts and offered them to Complainant. The seven domain names involved in that case were: <ecopetrolamerica.com>, <ecopetrolamerica.co>, <ecopetrolamerica.net>, <ecopetrolamerica.org>, <ecopetrolamerica.info>, <ecopetrolamerica.mobi>, and <ecopetrolamerica.biz>.

There are two additional NAF cases related to Respondent Johny Alfonso Romero Rocha involving the domain names <ecopetrol.co> and <ecopetrol.us> (Ecopetrol America Inc. v. JOHNY ALFONSO ROMERO ROCHA, NAF Claim No. 1450584 and 1450580).

In all the cases, Respondent Johny Alfonso Romero Rocha was found to be acting in bad faith. In sum, the Panel finds that Respondents registered the disputed domain names to prevent the owner of the trademark from reflecting its mark in a corresponding domain name, and Respondents have engaged in a pattern of such conduct.

Accordingly, the Panel finds that Complainant has met the third requirement of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <mitotalplay.com.co>, <total-play.co>, <total-play.com>, <total-play.com.co> and <totalplay.com.co> be transferred to Complainant.

Pablo Palazzi
Presiding Panelist

Alvaro Loureiro Oliveira
Panelist

David, W. Quinto
Panelist
Date: April 9, 2013

 

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