WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Entertainment Plus, S.A. de C.V. v. Jairo Pita
Case No. D2015-1528
1. The Parties
The Complainant is Entertainment Plus, S.A. de C.V. of Cancun, Quintana Roo, Mexico, internally represented.
The Respondent is Jairo Pita of Playa del Carmen, Quintana Roo, Mexico, represented pro se.
2. The Domain Name and Registrar
The disputed domain name <transfers-usa.com> is registered with Misk.com, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 26, 2015. On August 27, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on August 31, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 20, 2015. The Response was filed with the Center on September 17, 2015.
The Center appointed Reynaldo Urtiaga Escobar as the sole panelist in this matter on October 2, 2015. 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.
The language of the proceeding is English as this is the language of the registration agreement for the disputed domain name.
4. Factual Background
The Complainant is a travel agency established in Cancun in 1999, having its website at "www.usa-transfers.com".
The Complainant is the owner of Mexican trademark registrations for USA TRANSFERS (and design) and USA TOURS & TRANSFERS MEXICO (and design), granted on April 23, 2013, in relation to international class 39, covering transportation services.
The Respondent is a tourism, transportation, and airport transfer company operating in Cancun, the Riviera Maya, and other locations outside of Mexico.
The disputed domain name was registered on September 4, 2013.
The website at the disputed domain name offers private shuttle transportation from airports in Cancun, Mexico City, Montego Bay, Punta Cana, Nassau, Martinique, Santo Domingo, El Cibao, Bahamas, among other localities.
5. Parties' Contentions
A. Complainant
In summary, the Complainant contends as follows:
(i) The website associated with the disputed domain name offers similar services to those offered by the Complainant at "www.usa-transfers.com";
(ii) The disputed domain name is identical or confusingly similar to the USA TRANSFERS mark in which the Complainant has earlier rights, since the disputed domain name and the Complainant's registered mark comprise identical words and symbols, namely USA and TRANSFERS;
(iii) The disputed domain name is also identical or confusingly similar to the Complainant's domain name <usa-transfers.com> that is registered since September 4, 2003;
(iv) The Respondent's use of the disputed domain name in connection with a deceitful business that exploits a renowned mark and offers some of the services and prices listed on Complainant's own website is not bona fide;
(v) The Respondent has not been commonly known by the disputed domain name, but rather adopted a domain name that is confusingly similar to the Complainant's domain name and mark, to benefit from the power of attraction and the prestige of that mark, without paying any compensation to the Complainant;
(vi) The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name since it is using the latter to divert customers of the Complainant by providing transportation services in Cancun and the Riviera Maya area just as the Complainant does;
(vii) The Respondent registered the disputed domain name for the purpose of disrupting the Complainant's business as the Respondent was totally aware of the existence of the Complainant's registered mark given that the Complainant's mark and logo appear on more than 70 of the Complainant's vehicles servicing the Cancun international airport;
(viii) The Respondent is taking unfair advantage of the Complainant's mark and is exploiting its reputation and prominent presence on the Internet, by using a confusingly similar domain name and offering the same services as the Complainant to attract Internet users.
B. Respondent
In summary, the Respondent submits that:
(i) The disputed domain name is comprised of both generic ("transfers") and geographical ("USA") terms, the latter being outside the scope of the Policy;
(ii) The Mexican registered marks relied upon in the Complaint confer rights on a mark encompassing words and a logo design which is impossible to reproduce in an alphanumeric string;
(iii) To the extent that the Complainant's marks are comprised of descriptive, generic, and geographic terms, said marks have not acquired secondary meaning in connection with the Complainant's transportation services rendered in Mexico;
(iv) The Respondent has been operating a legitimate transportation and airport transfers business for around two years aiming mainly touristic locations not only in Mexico but in the Caribbean as well;
(v) The Respondent is commonly known by the disputed domain name, which appears on the Respondent's email address, invoices, vouchers, orders, business cards, advertisements, and business profile on Google, Facebook, and Twitter;
(vi) It is not a fact that the Respondent knew or should have known about the Complainant's logo prior to registering the disputed domain name in 2013;
(vii) Having a trademark is not prerequisite to operate a company and searching for conflicting trademarks is not a prerequisite to register a domain name;
(viii) The Complainant knows that the Complainant's website at <usa-transfers.com> was under construction until 2010 and failed to mention it;
(ix) Because the Complainant is trying to make abusive use of the Policy to harass and retain the disputed domain name and to take advantage of the Respondent's global position on Google, the Respondent respectfully asks the Panel to make a finding of reverse domain name hijacking.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed in this administrative proceeding, the Complainant 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 was registered and is being used in bad faith.
These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
A. Identical or Confusingly Similar
The Complainant submits that the disputed domain name is identical or confusingly similar to its USA TRANSFERS and USA TOURS & TRANSFERS MEXICO composite marks, and to its own domain name and website at "www.usa-transfers.com".
As explained in paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), the test for confusing similarity under the UDRP involves a straightforward visual or aural comparison between the trademark at issue and the domain name itself to determine confusing similarity.
It follows that a comparison between the disputed domain name on the one hand and the Complainant's domain name and associated website on the other, is inapposite for the purpose of paragraph 4(a)(i) of the Policy.
Turning to the relevant comparison between the disputed domain name and the Complainant's marks, the Respondent asserts that the Complainant's marks are comprised of descriptive, generic, and geographic terms. The merits of this submission will be better assessed in connection with the second and third elements of paragraph 4(a) of the Policy since the first element serves essentially as a standing requirement and the Panel has already found that the Complainant has relevant trademark rights, as indicated in section 4 of this decision. See paragraph 1.2 of the WIPO Overview 2.0.
In comparing the relevant portion of the disputed domain name, that is "transfers-usa", with the nominative elements of the Complainant's mark USA TRANSFERS, the Panel notes that the two designations under review are identical except for the hyphen separating "USA" from "TRANSFERS" and the transposition of these terms in the disputed domain name.
As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant's USA TRANSFERS mark.
Accordingly, the Complainant has met the threshold of Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
The second item that a complainant needs to establish is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). Paragraph 4(c) of the Policy provides that "any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the Respondent's] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
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."
The Complainant asserts that the Respondent operates a deceitful business in competition with that of the Complainant and thus the Respondent's use of the disputed domain name does not fall within any of the safe harbors provided by Policy paragraph 4(c).
The Respondent counters that the Complainant's marks are comprised of descriptive, generic or geographic terms, the latter of which fall outside the scope of the Policy, and the others have not acquired secondary meaning in connection with the transportation services rendered by the Complainant in Mexico.
The Panel agrees with the Respondent in that the Complainant's USA TRANSFERS mark is composed of purely descriptive terms, namely USA, which is geographically descriptive of the United States of America, and "transfer", which is a commonplace word conveying the idea of "an act or process of moving someone or something from one place to another"1 . The term "transfers" conveys this very same idea in plural form.
On the facts of this case, the Panel notes in particular that:
i) The Complainant's marks were registered merely some four months prior to the registration of the disputed domain name;
ii) The registration certificates do not indicate a date of first use of the Complainant's marks, nor did the Complainant provide evidence of the marks' first use in commerce after grant on April 23, 2013;
iii) The Complainant did not produce evidence of goodwill and clientele associated with its marks;
iv) The Respondent has used the disputed domain name in connection with a bona fide offering of services;
v) The expression "usa transfers" is the subject of numerous third party uses over the Internet, including those related to money transfers;
vi) The Respondent does not impersonate or disparage the Complainant in the website associated with the disputed domain name;
vii) The Respondent's website does not reproduce the Complainant's composite marks;
viii) The Respondent, Jairo Pita, submits that he is the CEO of XCA Tours & Transfers USA, S.A. de C.V.; and
ix) The Respondent appears to have registered at least two other domain names using the term "transfers" in connection with its business purposes.
On the available record, the Panel does not find that the Respondent has been targeting the Complainant or any goodwill attached to the Complainant's marks. As noted, the Complainant's trademarks are combined word and device marks, and the Panel finds that the Complainant's trademark rights in USA TRANSFERS do not prevent the Respondent from using the terms "usa" and "transfers" in consonance with their ordinary dictionary definitions. See Public Storage v. Deer Valley Mini & RV Storage and Deer Valley Mini Storage, WIPOCase No. D2011-1397 (the fact that the Complainant has rights in the PUBLIC STORAGE mark does not mean that those rights can be used to bar the fair use of common words used for their common meaning).
Accordingly, the Panel finds that the Respondent's use of the disputed domain name is justified under paragraph 4(c)(i) of the Policy.
The fact that both the Complainant and the Respondent provide airport transportation services is no obstacle for the application of the defense in point. See OLX Inc., OLX S.A. c. Francisco "Paco" Rafols Duch, RB Seo Marketing, S.L., WIPO Case No. D2013-0094 (<mundosexanuncio.com>) (although the Complainant and the Respondent offer classified ads online, that circumstance alone does not preclude the Respondent from making a bona fide offering of services within the meaning of Policy paragraph 4(c)(i)).
In the circumstances, the Panel finds that the Complainant did not meet its burden in relation to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
In light of its finding under paragraph 4(a)(ii) of the Policy, the Panel need not address the arguments raised by the parties in connection with the instant element. But even if it had done so, the Panel would have found that the Complainant did not make a showing of bad faith registration and use of the disputed domain name, as required by paragraph 4(a)(iii) of the Policy.
D. Reverse Domain Name Hijacking
Paragraph 15(e) of the Rules states, in relevant part:
"If the Panel concludes that the dispute is not within the scope of paragraph 4(a) of the Policy, it shall so state. 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."
The Respondent seeks a finding of reverse domain name hijacking under this provision. In support of that request, the Respondent points out the Complainant's failure to acknowledge that the Respondent is associated with XCA Tours & Transfers USA, S.A. de C.V., a company whose name validates the Respondent's legitimate interests within the realm of the Policy.
On the record before it, the Panel notes that XCA Tours & Transfers USA, S.A. de C.V. is shown as registrant organization in the WhoIs records for the disputed domain name.
However, because the Complainant had already acquired registered trademark rights by the time of registration of the disputed domain name, the Panel is not prepared to make a finding of reverse domain name hijacking against the Complainant.
7. Decision
For the reasons set out above, the Complaint is denied.
Reynaldo Urtiaga Escobar
Sole Panelist
Date: October 26, 2015
1 http://www.merriam-webster.com/dictionary/transfer