WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Almacenes Exito S.A. v. Jose Luis Rivolta
Case No. D2014-0946
1. The Parties
The Complainant is Almacenes Exito S.A. of Antioquia, Colombia, represented by Baker & McKenzie, Colombia.
The Respondent is Jose Luis Rivolta of Rosario, Santa Fe, Argentina.
2. The Domain Name and Registrar
The disputed domain name <tarjetaexito.net> is registered with Name.com LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 4, 2014. On June 5, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 5, 2014, 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 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 the Respondent of the Complaint, and the proceedings commenced on June 24, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 14, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 16, 2014.
The Center appointed Manuel Moreno-Torres as the sole panelist in this matter on July 22, 2014. 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 the owner of the following Colombian trademarks:
TARJETA EXITO, class 36, registered on December 9, 2005, registration number 309303;
TARJETA EXITO & Device, class 36, registered on March 14, 2006, registration number 312376.
The Complainant, Almacenes Exito, S.A. is a business corporation, leader in the retail business in Colombia. The Complainant has been using the trademarks TARJETA EXITO and TARJETA EXITO & Device as a recognized credit card to purchase goods in the retail stores identified as EXITO, owned and operated by the Complainant as well as in many other associated commercial establishments. TARJETA EXITO trademarks are to be considered well-known in Colombia.
The domain name <tarjetaexito.net> was registered on December 25, 2011.
5. Parties' Contentions
The Complainant alleges that the disputed domain name reproduces completely and in an identical way, the already registered trademarks (TARJETA EXITO and TARJETA EXITO & Device) of its property. Moreover, the disputed domain name does not provide any distinguished character from the Complainant's trademarks.
In respect to the second element, the Complainant states that the Respondent has not demonstrated any preparations to use the disputed domain name or a name corresponding to the domain names in connection with a genuine offering of goods or services. Besides, the Respondent is deceitfully informing visitors to the website of the benefits and characteristics of the Complainant's credit card identified by using the trademarks TARJETA EXITO and TARJETA EXITO & Device allegedly to gain traffic to the Respondent's website in a way to obtain click‑through revenues through the sponsored advertisements.
Finally, the Complainant finds that the Respondent has no other reason to register the disputed domain name but to prevent the Complainant from registering such domain name and/or to try to sell it to the Complainant for commercial gain.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
In order for the Panel to decide to grant the remedy of transfer of the disputed domain name to the Complainant, it is necessary that the Complainant proves, as required by paragraph 4(a) of the Policy, that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
The fact that the Respondent has not provided any Response to the Complaint does not relieve the Complainant of the burden of proving its case. In the absence of a Response, paragraph 5(e) of the Rules expressly requires the Panel to "decide the dispute based upon the complaint". Under paragraph 14(a) of the Rules in the event of such a default the Panel is still required "to proceed with a decision on the complaint", whilst under paragraph 14(b) it "shall draw such inferences there from as it considers appropriate".
Thus where a party fails to present evidence which is in its control, the panel may draw inferences based on the evidence available and particular circumstances of the case (Mary-Lynn Mondich and American VintageWine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy's Antiques, WIPO Case No. D2000-0004; State of Wisconsin v. Pro-Life Domain, Inc., WIPO Case No. D2003-0432; La Caixa D'Estalvis I Pensionsde Barcelona v. José Antonio Bernal, WIPO Case No. D2006-1637). Here, the Respondent has defaulted, and it is appropriate in the present case for the Panel to accept the reasonable facts asserted by the Complainant and to draw adverse inferences of fact against the Respondent.
A. Identical or Confusingly Similar
According to the Policy, paragraph 4(a)(i), the Complainant must show that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
In this case, the Complainant has offered evidence of use and ownership of the TARJETA EXITO trademark. Thus, the Complainant's trademark being fully reproduced in the disputed domain name, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
No evidence that is before this Panel brings up the conclusion that the Respondent has any rights or legitimate interests in the disputed domain name. As claimed by the Complainant, the Respondent has not demonstrated any preparations to use the disputed domain name or a name corresponding to the domain name in connection with a genuine offering of goods or services nor is making the Respondent a legitimate noncommercial or fair use of the domain name. On the contrary, as alleged by the Complainant and un-refuted by the Respondent, the Respondent profit from click-through revenues generated from its website's sponsored advertisements when the Internet users bait and access to the Respondent's website.
The Respondent not having answered the Complaint to rebut the Complainant's allegations, the Panel cannot find out any of the circumstances specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name.
In the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant has established that its trademarks have been used and are well known in Colombia. To this Panel's knowledge, the Complainant and its portfolio of trademarks TARJETA EXITO and TARJETO EXITO & device are famous in Colombia. Therefore, the Complainant's trademarks are to be considered well known. Accordingly, in the opinion of the Panel, it is not likely that the Respondent has registered the disputed domain name without being aware about the existence of the trademark TARJETA EXITO. Such previous knowledge of the Complainant's trademarks explains clearly in the Panel's view the reproduction of the trademark in the disputed domain name.
Therefore, the registration of a domain name incorporating a well-known mark by a party that has no legitimate connection with the trademark or relationship with the owner of the trademark, generally constitutes bad faith registration and this is the approach of the Panel in this case (Gmbh v. Carlos Gil Belmonte, WIPO Case No. D2010-0456). And this is what happened in the present case.
The Panel also takes into consideration that the clear inference to be extracted is that the Respondent registered and used the disputed domain name for the purpose of attracting Internet users to its website by creating a likelihood of confusion with the Complainant's trademark. Certainly, when directing Internet users to the Respondent's webpage the only conceivable purpose was to obtain commercial gain by creating Internet user confusion through suggesting source, sponsorship, affiliation or endorsement by the Complainant of the Respondent's website and this constitutes bad faith registration and use of the disputed domain name. In this regard, it is important to take into account the reproduction of the Complainant's trademarks in the corresponding website managed by the Respondent which personally was checked by the Panel.
Upon the above mentioned, the Complainant has established the third and final element necessary for a finding that the Respondent has engaged in abusive domain name registration and use.
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 name <tarjetaexito.net> be transferred to the Complainant.
Date: August 2, 2014