WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tiendas Soriana, S.A. v. Jerri Netzer, JNOM Online Marketing LLC
Case No. D2012-2213
1. The Parties
The Complainant is Tiendas Soriana, S.A. de C.V. of Mexico City, Mexico, represented by Arochi, Marroquín & Lindner, S.C., Mexico.
The Respondent is Jerri Netzer, JNOM Online Marketing LLC of Las Vegas, United States of America.
2. The Domain Name and Registrar
The disputed domain name <mercadosoriana.com> is registered with PSI-USA, Inc. dba Domain Robot (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2012. On November 12, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 12, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 15, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 16, 2012.
The Center verified that the Complaint together with the amendment to 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 the Respondent of the Complaint, and the proceedings commenced on November 22, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 12, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 13, 2012.
The Center appointed Miguel B. O'Farrell as the sole panelist in this matter on December 19, 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
The Complainant is a large supermarket in Mexico that holds several registrations for the trademark SORIANA in Mexico and other jurisdictions. Particularly, Mexican Registration No. 286477granted on April 19,1983 for services of business focused on the management or exploitation of a commercial or industrial company; renewed on December 17, 2012 under No. 218924/2012 for a ten year term and No. 444094 granted on October 13, 1993 which covers, among other goods, paper and stationary products.
In addition the Complainant holds US trademark Registration No. 2713729 SORIANA granted on May 6, 2003, covering retail store services, namely, convenience stores and Registration No. 006004601 SORIANA granted by the Office of Harmonization in the Internal Market (Trademarks and Designs) covering mainly services of supermarkets and retail products.
The disputed domain name <mercadosoriana.com> was registered on December 16, 2010.
5. Parties’ Contentions
The Complainant contends, basically, the following:
That it is one of the biggest supermarkets in Mexico, currently with a workforce of over 84.000 employees.
That Mexican consumers identify the Complainant as SORIANA or MERCADO SORIANA.
That it holds trademark registrations for the word mark SORIANA mentioned in 4 above (Factual Background) among others, and that it registered several domain names with the word SORIANA before the Respondent registered the disputed domain name <mercadosoriana.com> on December 16, 2010.
That the Respondent registered and is using in bad faith the disputed domain name to attract Internet users to Respondent’s site where they only find parked links as well as the offer for sale of the disputed domain name. All of this is done by the Respondent to take advantage of the fame of the trademark SORIANA to obtain a commercial gain.
In view of the foregoing, the Complainant requests that the disputed domain name <mercadosoriana.com> be transferred to the Complainant.
The Respondent did not submit any response to the Complaint.
6. Discussion and Findings
For the Complaint to succeed in this proceeding, under paragraph 4(a) of the Policy, it must prove that:
(i) The disputed 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 disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel considers that the disputed domain name <mercadosoriana.com> and the trademark SORIANA in which the Complainant has rights are confusingly similar to the extent of causing Internet user confusion. In this connection, the trademark SORIANA is completely included in the disputed domain name in which it is clearly recognizable as such and undoubtedly constitutes the primary distinctive feature. The additions of the generic top-level domain “.com” and the descriptive common word “mercado” that in English means “market” (Appleton’s New Cuyás English Spanish Dictionary, Fifth Edition, Catherine B. Avery, page 365) are insufficient in the Panel’s view to prevent threshold Internet user confusion, especially in Mexico where every person knows the meaning of the common Spanish word “mercado” and would be easily led to confusion with the Complainant and the Complainant´s trademark.
Therefore, the Complainant has succeeded on this first element of the Policy.
B. Rights or Legitimate Interests
The second element that the Complainant must prove pursuant to paragraph 4(a)(ii) of the Policy is that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Policy in 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 a domain name. It has therefore become generally accepted under the Policy that, once a complainant has presented a 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 by concrete evidence demonstrate its rights or legitimate interests in the domain name in order to refute the prima facie case.
The Panel finds that the Complainant has made a strong prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and so the burden of production of evidence has effectively been shifted to the Respondent, who did not reply to the Complainant’s contentions and, therefore, has not made such showing.
In that connection, the Complainant has submitted relevant evidence showing that the Respondent has not made a bona fide offering of goods or services under the disputed domain name by trying to obtain commercial gain through link farm parking taking advantage of the fame and good will of SORIANA. Some of the links contained in the website resolve to competitors of the Complainant. In addition, the disputed domain name has been offered for sale on several occasions, which does not help to show a bona fide use of the disputed domain name by the Respondent.
In terms of the Policy, such use in the present circumstances does not appear to be a noncommercial or fair use of the disputed domain name and therefore, the Panel finds that the Respondent is trying to misleadingly divert consumers. Moreover, the Panel finds that the Respondent is attracting Internet users to its website for commercial gain. Such use cannot be considered a bona fide use, or fair use or noncommercial use.
Additionally, there is no evidence that the Respondent is commonly known as or identified by “mercadosoriana”. Furthermore, there is no evidence showing that the Respondent operates a business or any other organization under the disputed domain name.
In view of the foregoing, and in absence of a plausible explanation from the Respondent, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
In accordance with paragraph 4(a)(iii) of the Policy, the third element that a complainant must prove is that the domain name has been registered and is being used in bad faith.
The Policy in paragraph 4(b) sets out various circumstances, which may be treated by the Panel as evidence of the registration and use of a domain name in bad faith.
The Complainant is one of the largest supermarkets in Mexico and has filed relevant evidence showing that it owns trademark registrations for SORIANA in Mexico, the US and OHIM which predate (some in many years) the registration of the disputed domain name.
In view of the foregoing, and in absence of a rebuttal from the Respondent, the Panel finds that the Respondent was aware or must have been aware of the trademark SORIANA before registering the disputed domain name, which evidences bad faith registration.
Furthermore, as stated by the Complainant and on the basis of printouts of the websites to which the disputed domain name resolves, and in absence of a rebuttal by the Respondent, the Panel finds that by using the disputed domain name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online locations, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.
For such reasons, the Panel finds that the Respondent both registered and is using the disputed domain name in bad faith and that the Complainant has therefore made out the third element of its case.
For the foregoing reasons, in accordance with paragraph 4 (i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <mercadosoriana.com> be transferred to the Complainant.
Miguel B. O'Farrell
Date: December 26, 2012