WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Grupo Milano, S.A. de C.V. v. PrivacyGuardian.org / 3 Mings LLC (Ming K Chow)
Case No. D2015-2263
1. The Parties
The Complainant is Grupo Milano, S.A. de C.V. of Cuauhtémoc, Mexico City, Mexico, represented by Lex Informática Abogados, S.C, Mexico.
The Respondent is PrivacyGuardian.org of Phoenix, Arizona, United States of America ("United States") / 3 Mings LLC (Ming K Chow) of San Francisco, California, United States, self-represented.
2. The Domain Name and Registrar
The disputed domain name <milano.com> ("Disputed Domain Name") is registered with NameSilo, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 14, 2015. On December 14, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 14, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center received an informal communication from the Respondent on December 16, 2015.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 21, 2015. In accordance with the Rules, paragraph 5, the due date for Response was January 10, 2016. The due date for Response was extended at the request of the Respondent to January 14, 2016, in accordance with paragraph 5(b) of the Rules. The Response was filed with the Center January 11, 2016.
The Center appointed Gabriela Kennedy, Torsten Bettinger and Michael A. Albert as panelists in this matter on February 4, 2016. 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
The Complainant was established in 1934 in Mexico. It owns and operates clothing stores throughout Mexico. The Complainant is the holder of Mexican trade mark registrations for INDUSTRIAS MILANO, first registered April 13, 1973, and MILANO, first registered May 30, 1983.
The Disputed Domain Name was created on May 22, 1997 and resolves to a parking page displaying pay-per-click links.
5. Parties' Contentions
The Complainant's contentions can be summarized as follows:
(a) The Complainant has been using the MILANO mark continuously since 1943. It has more than 38 trade mark registrations for INDUSTRIAS MILANO and MILANO in Mexico, the earliest of which was filed in 1971.
(b) The Disputed Domain Name incorporates and is identical to the Complainant's MILANO mark and its corporate name.
(c) The Respondent has no rights or legitimate interests in the Disputed Domain Name. There is no evidence that the Respondent is commonly known by the Disputed Domain Name. The Disputed Domain Name resolves to a parking page that provides links to various websites, including adult websites, photos, clothing stores, cannabis apparel, sneakers, etc. The Respondent is not using the Disputed Domain Name to offer bona fide goods or services, and is not using the Disputed Domain Name in relation to its descriptive or generic meaning. The Respondent chose to register the Disputed Domain Name for the purpose of redirecting traffic to the Respondent's parking page in order to obtain pay-per-click revenue. As such, the Respondent cannot be said to be using the Disputed Domain Name for a legitimate noncommercial or fair use.
(d) The Respondent has registered and is using the Disputed Domain Name in bad faith for the purposes of selling it to the Complainant in excess of its out-of-pocket expenses directly related to the Disputed Domain Name. On November 12, 2015, the Complainant received an email from Sedo (a domain name broker) stating that negotiations for the purchase of the Disputed Domain Name would likely be unsuccessful as the value of the Disputed Domain Name is estimated to be at least EUR 50,000. Based on the Complainant's research, the average value of a domain name is USD 268, according to various other websites.
(e) The Respondent placed a robots.txt file in the root directory of the website to which the Disputed Domain Name resolves, which can be evidence of bad faith.
(f) The Respondent has previously been involved in two other UDRP proceedings. The Respondent has therefore engaged in a pattern of conduct of registering domain names in order to prevent the owners of the relevant trade marks from reflecting them in a corresponding domain name.
(g) The Complainant's INDUSTRIAS MILANO and MILANO marks are registered and protected in Mexico. The Respondent registered the Disputed Domain Name 26 years after the Complainant registered its earliest mark (i.e., INDUSTRIAS MILANO) and 54 years after the Complainant began widely using MILANO in its commercial activities. In 1999, the Respondent (Ming K Chow) registered the domain name <mexico-city.net>, which shows that the Respondent likely had knowledge of the Complainant's trade marks.
(h) The Respondent (Ming K Chow) owns at least 75 domain names. The Respondent must use its reasonable efforts to ensure that it is not infringing on the rights of others, and cannot be willfully blind to whether or not a particular domain name infringes a trade mark.
(i) The Respondent is using the Disputed Domain Name to intentionally attract Internet users to the Respondent's parking page for commercial gain, by creating a likelihood of confusion with the Complainant's mark.
The Respondent's contentions can be summarised as follows:
(a) The Complainant failed to establish that it has exclusive rights in the generic word "Milano" (i.e., Italian for Milan). There are at least 2,665 trade marks that have been filed or registered worldwide, which incorporate the word "Milano". Even in Mexico, where the Complainant is based, there are 174 trade marks that have been filed and registered which include the word "Milano". The Complainant's MILANO mark has not acquired sufficient secondary meaning so as to grant the Complainant exclusive rights to use the generic word "Milano".
(b) Depending on the Internet search engine used and the IP address of the location where the search is being conducted, different results will appear when a search is conducted on the word "Milano". In San Francisco and Hong Kong, the top search results do not relate to the Complainant.
(c) Pay-per-click advertising websites can amount to a bona fide offering of goods or services, so long as the respondent is not exploiting the complainant's trade mark. In this case, the Disputed Domain Name is generic enough that it would not confuse Internet users into believing it is associated with the Complainant.
(d) The Respondent registered the Disputed Domain Name on May 22, 1997, and had been using it in relation to pay-per-click advertisements for over 18 years before these UDRP proceedings arose.
(e) The adverts displayed on the parking page to which the Disputed Domain Name resolves are automatically generated from the results of the users browsing history based on cookie technology.
(f) "Milano" means "Milan" in English, and refers to the second most populous city in Italy. The Respondent registered the Disputed Domain Name because of its geographic meaning, which is the same reason it registered <mexico-city.net> and other geographic domain names. The Complainant could not identify any domain names registered by the Respondent which infringed any third party trade mark rights.
(g) The Respondent was contacted by the Complainant about the possibility of selling the Disputed Domain Name, and therefore there is no bad faith on the part of the Respondent. At the end of 2013, the Respondent's account with its registrar at the time (Mydomain) was hacked and several domain names (including the Disputed Domain Name) were transferred to other registrars and registrants. The Disputed Domain Name was transferred to a new registrant, and the registrant's identity was shielded through the use of a proxy service provider. In February 2014, the Respondent filed a lawsuit in San Francisco to regain the domain names. Therefore, the Respondent was not technically the registrant of the Disputed Domain Name in November 2014 when the Complainant (via Sedo) attempted to purchase the Disputed Domain Name.
(h) The Respondent requests that a determination of Reverse Domain Name Hijacking be found against the Complainant.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a trade 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 by the Respondent in bad faith.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in the INDUSTRIAS MILANO mark and MILANO mark, based on its trade mark registrations in Mexico (the earliest of which was filed in 1971) and/or its common law rights in the MILANO mark since 1943.
The Disputed Domain Name incorporates the Complainant's MILANO mark in its entirety. It is a well-established rule that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the generic Top-Level Domain extension, in this case ".com", may be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D2006-0762).
Accordingly, the Panel finds paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), states that once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel accepts that the Complainant has not authorised the Respondent to use the MILANO mark, and there is no relationship between the Complainant and the Respondent which would otherwise entitle the Respondent to use the MILANO mark. Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondent to show that it has rights or legitimate interests in the Disputed Domain Name.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent's use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if it has acquired no trade mark or service mark rights; or
(iii) the 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 the trade mark or service mark at issue.
The Disputed Domain Name currently resolves to a parking page which contains sponsored links. As stated in paragraph 2.6 of the WIPO Overview 2.0, use of a domain name to post parking pages or pay-per-click links" may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a 'bona fide offering of goods or services'…or from 'legitimate noncommercial or fair use' of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder." A common example of such permissible use, which may amount to a right or legitimate interest, is where the pay-per-click links genuinely relate to the generic meaning of the domain name and the respondent had no intention of targeting the complainant (see National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424).
The Panel accepts that the word "Milano" is a geographic term that refers to a city in Italy (i.e., Milan in English). The Disputed Domain Name resolves to a parking page which largely contains pay-per-click links related to its geographic meaning (i.e., links relating to the city of Milan, including travel websites). Even though the pay-per-click links are not solely restricted to websites regarding Milan, the Panel is of the view that the Respondent likely registered the Disputed Domain Name due to the geographic meaning of "Milano", and without specifically targeting the Complainant or its MILANO mark. This is based on the fact that the Complainant has failed to provide any evidence, regarding its fame and well-known status, particularly that outside of Mexico, and the Respondent appears to have no ties to Mexico and no evidence has been adduced by the Complaint to suggest that the Respondent had knowledge of the Complainant's mark and its activities. Even though the Respondent registered the domain name <mexico-city.net>, the Panel does not view this is evidence that the Respondent must have been aware of the Complainant's MILANO mark (as alleged by the Complainant), especially since the Respondent has registered many other geographic denominations as domain names (e.g., <yangzhou.com>, <kuala-lumpur.com>, <recreo.com>, <burkina-faso.com>, etc).
The Respondent appears to regularly register domain names that include geographic or generic words for the purposes of using them in relation to pay-per-click advertising. Such business activities can be legitimate and are not in themselves a breach of the Policy, so long as they do not encroach on a third party's trade mark rights. In this case, no evidence has been provided to establish that the Respondent has engaged in a pattern of registering domain names that take advantage of another's trade mark rights. The Respondent simply chooses to register geographic and generic words as domain names.
Taking all of the above into account, the Panel concludes that the Respondent is using the Disputed Domain Name in a descriptive manner, rather than in order to target the Complainant's MILANO mark, which can confer rights and legitimate interests on the Respondent in the Disputed Domain Name.
The Panel finds that the Complainant has failed to satisfy paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
As the Complainant has failed to satisfy paragraph 4(a)(ii) of the Policy, the Panel does not need to consider whether the requirements of paragraph 4(a)(iii) are met.
D. Reverse Domain Name Hijacking
The Respondent requests a finding of Reverse Domain Name Hijacking. Reverse Domain Name Hijacking is defined under the Rules as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name". Paragraph 15(e) of the Rules provides that, if "after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding."
Mere lack of success of the Complaint is not in itself sufficient for a finding of Reverse Domain Name Hijacking.
In this case, the Complainant made no assertions and provided no evidence to establish that its MILANO mark was well-known outside of Mexico. The Complainant also knew full well the geographic meaning of the word "Milano", and even provided evidence that showed that the Respondent only appears to register geographic and generic domain names. In the light of the above, the Panel considers that the Complainant filed the Complaint with the primary intent of obtaining the transfer of the Disputed Domain Name in bad faith.
The Panel, therefore, finds that the Complaint was made in bad faith as an attempt at Reverse Domain Name Hijacking, constituting an abuse of this administrative proceeding.
For the foregoing reasons, the Complaint is denied.
Michael A. Albert
Date: February 18, 2016