WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Supermercados Econo, Inc. v. Julio Hernández
Case No. D2015-1612
1. The Parties
The Complainant is Supermercados Econo, Inc. of Carolina, Puerto Rico, Unincorporated territory of the United States of America ("USA" or "US"), represented by Ferraiuoli LLC, USA.
The Respondent is Julio Hernández of San Juan, Puerto Rico, Unincorporated territory of the USA.
2. The Domain Name and Registrar
The disputed domain name <supermercadosecono.com> (the "Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 9, 2015. On September 11, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date 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 sent an email communication to the Complainant on September 16, 2015 informing that the Complaint and Annexes had not been submitted in the correct file size, and inviting the Complainant to submit them in the correct file size. The Complainant sent the Complaint and Annexes in the correct file size on the same date.
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 September 18, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 8, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 9, 2015.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on October 22, 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.
4. Factual Background
The Complainant is a Puerto Rican business corporation that has operated a chain of grocery stores and supermarkets in the US Caribbean territory of Puerto Rico since 1971. The Complainant advertises its stores and promotions in signage, local media, and a Spanish-language website at "www.superecono.com". The website shows that the Complainant operates stores in some 45 cities and towns in Puerto Rico, widely covering the territory.
The Complainant holds a trademark registration in the Commonwealth of Puerto Rico for a design mark featuring the words "Supermercados" and "Econo" in differing fonts and colors (Registration No. 101776, registered on April 6, 2009). The registration claims first use on August 19, 1971.
According to the Registrar, the Domain Name was created on October 19, 2005. The Respondent, Mr. Hernández, is listed as the registrant. The Respondent has not replied to communications from the Complainant and the Center, and there is nothing in the record concerning the Respondent's identity and business apart from the actual use of the Domain Name.
As demonstrated by screen shots attached to the Complaint, the Domain Name formerly redirected visitors to "www.castingmodelspr.com", an English-language website that advertised the services of a talent agency, featuring photos of a model. The Domain Name was also advertised on the Registrar's domain name auctions website, showing a "current bid" of USD 50,000. At the time of this Decision, the Domain Name resolves to an English-language page advertising that the Domain Name is available for sale and suggesting that it would be attractive for prospective buyers in "Costa Rica, Spain and Puerto Rico".
5. Parties' Contentions
The Complainant argues that the Domain Name is confusingly similar to its SUPERMERCADOS ECONO mark and states that it has not given the Respondent permission to use the mark in the Domain Name.
The Complainant alleges that there is no evidence that the Respondent has rights or legitimate interests in the Domain Name and infers that the Domain Name was registered and used in bad faith, in an effort to take advantage of the goodwill associated with the Complainant's mark.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(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.
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. Identical or Confusingly Similar
The Complainant holds a Puerto Rico trademark registration for a design mark prominently featuring the words "supermercados" ("supermarkets" in Spanish) and "econo", which is not a dictionary word but an abbreviated term suggesting "economical" in English or "económico / económica" in Spanish. The Domain Name (disregarding the nondistinctive ".com" generic Top-Level Domain) is identical to the Complainant's mark SUPERMERCADOS ECONO.
The UDRP does not expressly require a national trademark registration, and the Panel notes that Puerto Rican trademark registrations (unlike those of many US states) are issued only after an examination procedure, under an articulated and well-established trademark legal regime. Hence, they are entitled to deference in a UDRP proceeding. A design mark cannot by its nature be considered identical to a domain name, but where the word elements contribute materially to the distinctiveness of the mark, there may be confusing similarity for purposes of 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.
UDRP panels customarily treat the first element of the Policy as a standing requirement, which simply requires "a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name". See WIPO Overview 2.0, paragraph 1.2.
The Panel finds that this test is satisfied in the present case and concludes that the first element of the Policy has been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of circumstances indicating a respondent's rights or legitimate interests in a disputed 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."
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production to show rights or legitimate interests in the disputed domain name shifts to the respondent. See WIPO Overview 2.0, paragraph 2.1.
Here, the Complainant has established trademark rights and denied any relationship with the Respondent. The website associated with the Domain Name does not reflect any legitimate commercial or noncommercial interest in a corresponding name, and the Respondent has not come forward to assert such an interest.
The Domain Name previously redirected to a website advertising the services of a model agency with no connection with the word "supermercados" and "econo". Additionally, while the word "supermercados" means supermarket in Spanish and "econo" may be read as the abbreviation of "economical" (as stated under Section A), the Panel notes that the Domain Name currently resolves to a parking website offering the Domain Name for sale, i.e., the Domain Name is not used in connection with the relied-upon meaning. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.
The Panel concludes that the second element of the Policy has been established.
C. Registered and Used in Bad Faith
The Policy includes a non-exclusive list of circumstances that "shall be evidence of the registration and use of a domain name in bad faith", including the following on which the Complainant implicitly relies:
"(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 …
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location."
The Complainant suggests that the Respondent's intent is to attract Internet users for commercial gain and sell the Domain Name for a price far exceeding the Respondent's out-of-pocket costs.
The Panel notes that the Domain Name was registered in 2005, while the Complainant's trademark was registered only in 2009. However, the case record shows that the mark was in commercial use for many years before either event, since the 1970s. Like the Complainant's mark, the Domain Name distinctively combines "econo", which is not a dictionary word, with "supermercados", the Spanish word for "supermarkets". This is unlikely to be merely a coincidence, and the high price listed for the Domain Name suggests that the Respondent was aware of the Complainant's trademark.
In view of the Complainant's long use of the mark SUPERMERCADOS ECONO since 1970s, the Panel finds that the Respondent, a resident of Puerto Rico, was more likely than not aware of the Complainant's mark and intentionally registered the Domain Name to attract Internet users familiar with the Complainant's mark, for commercial gain. It also appears likely that the Respondent sought to sell the Domain Name for a price exceeding its out-of-pocket costs which supports an inference of bad faith. The Panel notes that the Domain Name was offered for sale on the website hosted under the Domain Name and through the Registrar's auction service, although there is no specific evidence that the Respondent has sought to sell the Domain Name directly to the Complainant.
The Panel finds that the third element of the Complaint, bad faith registration and use, has been established within the meaning of the Policy.
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 <supermercadosecono.com> be transferred to the Complainant.
W. Scott Blackmer
Date: November 10, 2015