WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Autobuses de Oriente ADO, S.A. de C.V. v. Private Registration / Francois Carrillo
Case No. D2017-1661
1. The Parties
Complainant is Autobuses de Oriente ADO, S.A. de C.V. of Mexico City, Mexico, represented by Tsuru, Morales & Tsuru Abogados, S.C., Mexico.
Respondent is Private Registration of Denver, Colorado, United States of America / Francois Carrillo, of Juvignac, France, represented by Muscovitch & Associates, Canada.
2. The Domain Name and Registrar
The disputed domain name <ado.com> (the “Domain Name”) is registered with TurnCommerce, Inc. DBA NameBright.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 25, 2017. On August 28, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 29, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on September 4, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 11, 2017 by Center.
The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on September 13, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 3, 2017. The Response was filed with the Center September 29, 2017.
The Center appointed Christopher S. Gibson, William R. Towns, and David H. Bernstein as panelists in this matter on November 16, 2017. 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.
On November 20, 2017, Complainant submitted an unsolicited Supplemental Filing. On that same day, Respondent submitted its Objection to Complainant’s Supplemental Filing and in the alternative, Request to File Responding Submission.
As the Center notified to the parties upon receiving these additional submissions, the Rules provide for the submission of the Complaint by Complainant and the Response by Respondent. No express provision is made for supplemental filings by either party. Paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of supplemental filings received from either Party; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.6.
On November 23, 2017, the Panel issued its Administrative Panel Procedural Order No. 1. Noting that Complainant’s Supplemental Filing re-argues points already made in its Complaint, the Panel declined to accept Complainant’s unsolicited Supplemental Filing, and, accordingly, indicated that there was no reason for Respondent to submit any further response to Complainant’s Supplemental Filing.
On November 30, 2017, further to Complainant’s request of November 28, 2017 that the proceedings be suspended, the Panel issued Administrative Procedural Order No. 2, suspending the case until December 30, 2017 for purposes of settlement discussions. On December 29, 2017, Complainant requested that the proceedings be reinstituted; accordingly, the Panel issued Administrative Procedural Order No. 3 on January 5, 2018, reinstituting the proceedings.
4. Factual Background
Complainant is a Mexican bus company incorporated in 1939 in Mexico City. Complainant is head of Grupo ADO and has become one of the most important bus companies in Mexico.
Complainant has submitted evidence to show that it owns trademark registrations for its ADO mark in Mexico, the United States (“US”), and the European Union (“EU”), dating from as early as October 1989, and with the date of first use dating from as early as June 1935. ADO has been declared as a well-known trademark by the Mexican Institute of Industrial Property (the “MIIP”).
Complainant has a presence on social networks such as Facebook, Twitter, YouTube, and Instagram. Complainant’s profile on Facebook has been liked and is followed by 579,275 people; its Twitter page has 45,200 followers and has been liked by 7,258 people; its YouTube channel has been liked by 5,025 people; and its Instagram profile has 2,220 followers.
In August 2013, Complainant acquired the Spanish bus company, Grupo Avanza, expanding recognition of the ADO mark in the EU.
Complainant, by itself or through subsidiaries, owns several domain names incorporating the trademark ADO:
Jan 31, 1995
July 16, 2009
September 26, 2012
February 28, 2013
May 17, 2013
February 25, 2012
June 4, 2010
Respondent is a French citizen residing in France. Respondent is an investor and reseller of domain names and operates the website “Catchy.com” as a domain name business specializing in the sale or rental of domain names. The Domain Name resolves to a website, which in turn links to the website at “www.catchy.com”. The Domain Name is offered for sale on the “www.catchy.com” website with a list price of UDS 500,000.
The Domain Name was initially registered on January 28, 1999. The Domain Name was acquired by Respondent from the previous registrant on June 20, 2012 for USD 27,500.
5. Parties’ Contentions
(i) Identical or confusingly similar
Complainant asserts that at the time the Domain Name was registered, it owned valid trademark rights in its ADO mark in Mexico (since as early as 1935). Further, Complainant owns trademark registrations for ADO in the US and EU, and has expanded its presence in the EU since at least 2013, when it acquired the Spanish bus company, Grupo Avanza, as part of its international growth plans. Complainant states that its trademark ADO and the services covered by it are widely promoted and marketed. Complainant indicates that the ADO mark has been referenced in media and popular culture: it has been prominently displayed in magazines that have been widely distributed in Mexico and Latin America. Complainant claims its presence in the US and EU markets has also developed an important level of recognition by clients and users. According to Complainant, the fame of the ADO mark, which stands for ‘‘Autobuses de Oriente”, shows that ADO has no function or meaning other than to refer to Complainant’s name or its trademarks.
Complainant has submitted website traffic information from the Alexa and SimilarWeb websites, showing visits to the website linked to the Domain Name from Mexico, the US, Spain, France, Germany, Australia, and Brazil, with 80% of the visitors from Mexico. Complainant contends that given the popularity of the ADO trademarks in Mexico, it is evident that Internet users are being directed to the website linked to the Domain Name due to its close similarity with Complainant’s marks. The fact that Complainant owns the domain name <ado.com.mx>, which resolves to its main website, heightens the likelihood of Internet users being confused as to the origin and ownership of Domain Name.
Complainant also submits that the ADO mark was recognized as famous in the UDRP decision, Fundación Ado, A.C., Autobuses de Oriente Ado, S.A. de C.V. v. Webmerica LLC, WIPO Case No. DMX2012-0004, where the panelist indicated that the term does not have any function or meaning other than to identify Complainant’s trademark, as it is an acronym for its business name.
Complainant observes that Respondent is located in France. Complainant contends that the website to which the Domain Name resolved included content related to Complainant, its trademarks, services, and competitors in the years 2011 and 2012, even before Complainant expanded its presence to the EU in 2013. Complainant contends that Respondent has had knowledge of the existence of Complainant and its famous ADO trademark and the services for which it is intended.
Complainant’s explains that its trademark consists of the capital letters ‘‘ADO’’ in red and that consumers have become familiar with this image, associating it with Complainant and its services. Complainant states that the Domain Name is identical to Complainant’s ADO mark as it comprises the mark in its entirety.
The addition of the generic Top-Level Domain (“gTLD”) “.com” is immaterial for the purpose of assessing confusing similarity.
(ii) Rights or legitimate interests
Complainant contends that Respondent has no rights to or legitimate interests in the Domain Name.
The Domain Name currently resolves to a landing page, which re-directs Internet users to a website operated by Respondent at “www.catchy.com”, where domain names are being auctioned and sold.
The website to which the Domain Name resolves features a logo that prominently displays Complainant’s ADO trademark in red capital letters, similar to the distinctive and famous features of Complainant’s mark, along with the phrase “Do you like this domain? Make an offer!’’, thereby communicating that the Domain Name is being auctioned for sale or rent.
Respondent’s use of “ADO”
Complainant’s ADO trademark
Respondent’s website contains auctions for the sale or rental of domain names with logos, which according to Complainant reference famous trademarks of third parties. In the case of the Domain Name, Complainant asserts that the landing page displays a mimicry of Complainant’s ADO trademark, accompanied by the display of placeholder images and the name “Catchy.com” listed on its bottom right corner. The Domain Name’s webpage serves as a hyperlink to the site at <catchy.com>, thereby serving to redirect users to Respondent’s website where he auctions domain names and offers related professional services. Complainant states that this is not a simple case of a domainer’s activity on the Internet; rather, Respondent is targeting third party trademark holders, registering domain names that target famous brands and combining them with logos that copy their colors, designs, general composition, as well as their look, feel and trade dress.
Complainant indicates that, as observed on the “Internet Archive: Wayback Machine” (“Archive.org”), until four years ago (April 2012), the Domain Name had content directly related to transportation services, namely, bus tickets and terminals in Mexico, displaying imagery (buses and roads) and hyperlinks related to these services. From late 2012 until early 2015, the Domain Name was inactive, resolving to a placeholder webpage displaying the text “Advertise online!” alongside a logo comprising the letters “AD” inside a red circle, forming a letter “O.” Complainant submits that in August 2015, the webpage began displaying the brand ADO in red capital letters, thereby appealing to and taking advantage of the potential value that the Domain Name could represent to Complainant or a competitor of Complainant.
Complainant argues that there has been an underlying bad faith intent by Respondent to create the impression of association to Complainant. This intent has become more evident in recent years through Respondent’s mimicking of the ADO brand and its offer through the website to which the <catchy.com> domain name resolves, appealing to Complainant or competitors and illegitimately boosting the value of the Domain Name. This use of the Domain Name has harmed Complainant not only through the deprivation of a domain name related to Complainant’s famous ADO mark, but also through the effect that this has had on consumer activity in relation to Complainant’s services offered on the Internet.
Complainant claims that customers looking for Complainant’s tickets are unable to find its services when typing <ado.com> in a browser (i.e., the first and obvious choice of the Internet user looking for Complainant’s ADO tickets). Instead, they arrive at a landing page which has the purpose of selling the Domain Name to Complainant or a competitor. Complainant argues that Respondent’s landing page poses a risk of frustrating customers, who might move on to buy tickets from a competitor after failing to find Complainant when searching for its tickets. In addition, previously in an attempt to profit on Complainant’s goodwill in its ADO mark, users were re-directed to sites where other companies sold bus tickets and related services. Respondent targets Complainant by using an imitation of the ADO trademark and trade dress as bait on the website, with the help of the Domain Name consisting of Complainant’s ADO mark. The display of the ADO mark and its trade dress as the main feature of Respondent’s landing page creates an imminent risk of confusion, which might trick Internet users into thinking there is a link between Respondent, the Domain Name, and Complainant.
Complainant alleges Respondent is involved in a pattern of registering and selling domain names emulating third parties’ trademarks and logos with similar general composition, designs, trade dress and look and feel, with the purpose of acquiring an illegitimate economic gain by auctioning them for sale or rent, in exchange for amounts that increase depending on their likeness to each trademark. Users who type <ado.com> in their browsers will be directed either to a domain name auction in which the Domain Name is being sold for a price that exceeds normal out-of-pocket costs, or will be presented with offers for rent/sale or auctions regarding domain names and their content resembling famous third party trademarks. Complainant states that as part of this scheme, Respondent is not only trying to sell the Domain Name for a sum that exceeds the out-of-pocket costs related to it, but is also using the Domain Name as bait to attract consumers to the “Catchy.com” website and the services it offers. Complainant claims that the content on that site demonstrates Respondent’s awareness of the value of brands on the Internet.
Complainant states there is no evidence of the existence of a trademark registration for Respondent’s mimicking design of Complainant’s ADO mark; and any trademark application filed by Respondent would have faced a citation of Complainant’s marks. In addition, any alleged meaning for the term “ado” is not being referenced or used on the webpage to which the Domain Name resolves. The Domain Name is not comprised of a generic word that could commonly be used to describe a product or service. There is no evidence that Respondent has been commonly known by the Domain Name. Complainant has not authorized, licensed or granted permission to Respondent to use the ADO trademarks or any variation on them.
(iii) Registered and used in bad faith
Complainant states that in the years prior to 2012, the website to which the Domain Name resolved offered services competitive to those protected by Complainant’s trademark registrations. In particular, the landing page to which the Domain Name resolved between 2010 and 2012 displayed content related to passenger land transportation and ticket sales in Mexico, Complainant’s main business, thereby demonstrating Respondent’s attempt to attract, for commercial gain, Internet users to the website to which the Domain Name resolved by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website. Complainant asserts that in 2015, Respondent began mimicking Complainant’s trademark by copying its colors, general composition, as well as look and feel and trade dress. This use of the Domain Name shows Respondent’s attempt to confuse consumers by linking the Domain Name (which comprises Complainant’s famous ADO mark) with Complainant, taking advantage of this confusion to obtain an illegal profit.
Complainant asserts that the erroneous association of the Domain Name with Complainant’s trademarks has affected Complainant and its potential consumers. As noted above, Internet users who accidentally arrive at the landing page linked to the Domain Name come mainly from Mexico (80.71%), where the ADO mark has been declared famous, and the United States, a neighboring country where Complainant holds trademark registrations for its ADO mark (9.27%). It should also be noted that both Complainant’s website (at its domain name <ado.com.mx>) and the site linked to the Domain Name are visited by Internet users from the EU, including France, where Respondent is located. Complainant provided data from Google Analytics concerning Complainant’s own website to show that, during the period between January 2016 and July 2017, users from France, Germany, Spain, and the United States carried out a substantial volume of transactions using the site. Complainant states that this data demonstrates that consumers around the world, including France, are aware of the existence of Complainant as provider of ground transportation services, and are at risk of mistaking Respondent’s website for that of Complainant. At the same time, Complainant states that Internet users who mistakenly arrive at Respondent’s webpage may believe that Complainant does not offer its services on the Internet, or may be frustrated and move to the sites of competitors to buy their bus tickets.
Complainant alleges that Respondent is a domain name speculator who understands the market and value for domain names. Respondent offers several services related to domain names, including automated domain name valuation services. Complainant contends it is not a coincidence that Respondent chose to register the Domain Name, as Respondent was well aware of Complainant’s trademarks and their level of recognition. According to Complainant, Respondent is involved in a pattern of registering domain names that imitate the general composition of famous trademarks, with the intention of selling them for a price that corresponds to the trademarks’ fame. The website to which the Domain Name resolves displays a logo that resembles the trade dress and look and feel of Complainant’s ADO trademarks. By using this logo, Respondent is heightening the relevance of the Domain Name to increase its market value as a consequence of the traffic generated by it. Complainant states that it is no coincidence that the Domain Name is more expensive than other domain names being auctioned on Respondent’s “Catchy.com” website.
Complainant asserts that Respondent has registered and auctioned for sale or rent domain names that consist of direct copies or simplifications of trademarks such as NUTELLA, UBER, and NIKE. Respondent copied the general composition (colors, designs, fonts, look and feel, and trade dress) of each of them to create a mimic or counterfeit brand, which could help increase the domain names’ likeness to each trademark and as a result, generate an increase in their value. Complainant submitted examples of this practice by Respondent as evidence of Respondent’s alleged intention to capitalize on the goodwill of well-known brands:
BOINC (Open-source software for volunteer computing)
Complainant states that Respondent also used a privacy service to hide his contact information for the Domain Name. While acknowledging that the use of a privacy service does not necessarily represent an act of bad faith under the Policy, Complainant claims that the use of such services by Respondent may indicate an intention to conceal his identity and go unpunished for registering domain names that infringe third parties’ trademark rights. Complainant argues that in view of Respondent’s actions concerning the Domain Name and that he is a domainer who promotes his commercial activities through “catchy brands” incorporated into domain names, and who has used the trade dress and visual elements of third parties’ famous brands to promote his domain names, it is likely Respondent used the privacy service to cover his tracks.
Complainant states that consumers who arrive at the landing page to which the Domain Name resolves and click on the ADO logo will be directed to a website at “www.catchy.com” displaying the statements
“The owner of ado.com is looking for a sale around $500.000” and “Rent this domain for $5,000/month.” Complainant asserts that the cost of the Domain Name is outrageous when compared to the other domain names offered for sale or rent on the “Catchy.com” website:
Complainant alleges that the increase in the Domain Name’s cost can only be attributed to Respondent’s understanding of the recognition of Complainant’s ADO trademark and Respondent’s intention to sell the Domain Name to Complainant or its competitors. Complainant contends that the registration of the Domain Name falls within the scope of paragraph 4(b)(i) of the Policy, as Respondent registered it with the purpose of selling or renting it for valuable consideration in excess of the normal out-of-pocket costs. Respondent’s conduct also falls within paragraph 4(b)(i) of the Policy, as panels have recognized that bad faith may be evidenced where a respondent attempts to trade on the goodwill associated with a mark in which Complainant has rights.
In addition, Complainant contends that under paragraph 2 of the Policy, Respondent had the responsibility to determine that the Domain Name’s registration did not infringe on or otherwise violate the rights of any third party. In the present case, Respondent failed to abide to the Policy by registering the Domain Name entirely reproducing Complainant’s famous ADO trademark. Further, according to the registration agreement executed by Respondent for the Domain Name, Respondent had the responsibility to know whether or not the Domain Name infringes on the legal rights of any third party. Complainant states that a free trademark search would have provided Respondent with an updated database of trademark applications and registrations. In addition, Yahoo! and Google offer effective web search engines to determine the most relevant references on the Internet in response to a particular search term.
In light of the above, Complainant contends that Respondent registered and used the Domain Name in bad faith.
Respondent states that he has never visited Mexico and had never heard of Complainant or its marks prior to the commencement of this proceeding. Respondent claims he is an investor in generic, non-infringing, made-up, and acronym domain names, such as the Domain Name, for both his own development and for re-sale.
Referring to an exhibit provided by Complainant, Respondent states that he is correctly identified as an entrepreneur who operates the website, “Catchy.com”, as a domain name boutique specializing in short, brandable domain names, as well as being the proprietor of several other online businesses. An article about Respondent notes that he is a “brand builder” who has created website businesses around three and four-letter domain names, such as <cax.com>, <ecop.com>, <dofo.com>, and <dona.com> (all of which relate to domain names).
Respondent states that it was in this context that he negotiated for the purchase of the Domain Name during the period May 26, 2012 until June 19, 2012, over five years ago. Commencing on May 26, 2012, Respondent contacted the former owner to purchase the Domain Name. The previous owner wanted a price of USD 75,000 because the Domain Name was generating monthly revenue for him, as it was being used for pay-per-click (“PPC”) advertising as shown in the Archive.org screenshot of April 23, 2012, which is the same screenshot provided by Complainant in evidence.
Respondent states he advised the former owner that the Domain Name was for a project, and not to hold for resale, and that the project was to build a software driven website for domain name advertising. Respondent states that he liked the Domain Name because it lent itself to use for advertising, since it included the term “ad.” Respondent and the former registrant agreed on a purchase price of USD 27,500, with Respondent also conveying the domain name <koz.com> to the former registrant. The Domain Name was transferred to Respondent on June 20, 2012. Respondent claims that immediately after acquiring the Domain Name he promoted his new project with a landing page, as shown in the first available Archive.org screenshot for the Domain Name (after his acquisition on June 20, 2012), dated July 21, 2012.
Respondent states that all use of the Domain Name for PPC advertising ceased after his acquisition of it in June 2012. Complainant’s claim that Respondent used the Domain Name for bus-related advertising as of April 23, 2012 is wrong – this was the prior registrant, not Respondent.
Respondent states he continued to work on his new project from time to time, but eventually lost interest in it in favor of other projects, and it was never launched. The project landing page remained up, but eventually on August 1, 2015, Respondent abandoned the advertising project and instead used the Domain Name for his inventory of generic, descriptive, and brandable domain names via his website at “www.catchy.com”.
Respondent claims that as a Frenchman, he knew the French word “ado” to be a common abbreviation of the word “adolescent”, as shown in the Collins French-English Dictionary, in Wikipedia, and in numerous press articles. Respondent, as someone proficient in English, states that he was also aware that the word “ado” was a common English word meaning “fuss”, as shown in the Merriam-Webster Dictionary and as used by Shakespeare in the title to his play, “Much Ado About Nothing.” Respondent states that he knew that three-letter domain names were rare and had intrinsic value, especially as acronyms for numerous things and entities.
Respondent states that Complainant, even today, does not show up in the first page of French Google, when searching “ado.” Given the use of the word “ado” in French and English, and given that it is also a short acronym, Respondent states that there are many third parties who use this term as part of their business name. These entities are located all over the world, such as Ado Properties, which is a public company and investor in real estate in Europe; Ado Corporation, a product manufacture in Japan; and ADO (Association Deportes Olympicos), which uses ADO as an acronym for its organization name, just as Complainant does. Respondent states there are hundreds of ADO trademarks registered to companies around the world, all of which have nothing to do with Complainant, as shown in the WIPO Global Brands Database. Respondent asserts that Complainant has no monopoly over the term or acronym, and it is untrue that ADO has no function and meaning other than to refer to Complainant’s name or trademark. Respondent argues that except in Mexico where Complainant enjoys fame, no one seeing <ado.com> would necessarily recognize it as belonging to Complainant.
In response to Complainant’s contention that Respondent targeted it and that this is evidenced by Respondent’s adoption of a mock-up of a logo for ADO that mimics Complainant’s own logo, Respondent asserts that the two logos are different from each other. Although they both use the color red (albeit a slightly different shade of red), and although both logos incorporate the same letters and/or term, the font is different, as is the look and feel. Respondent asks, what about the registered trademarks belonging to German company, Zimmer + Ronde Rmbh, which also use “ado” and the color red?
Respondent claims that there would have been no utility for him to copy Complainant’s logo (which is denied), as there was no revenue generated from the <ado.com> domain name, no infringing use, nor any attempt to interfere with Complainant. Respondent notes that Complainant relies on other alleged copies of logos on the “Catchy.com” website, in an attempt to prove that Respondent intentionally copied Complainant’s logo (which is false). Respondent asserts that none of these logos are used by Respondent in connection with any goods or services other than the sale of the domain names themselves, so there is no utility in intentionally copying logos. Respondent states it would be a different matter if he had used the logos in conjunction with goods and services similar to the alleged mark holder.
Respondent indicates that on the website linked to <catchy.com>, there are 299 logos corresponding to domain names owned by Respondent and third parties who have given permission to Respondent to sell their domain names. In response to Complainant’s allegation that Respondent is registering domain names that target famous brands, Respondent states that none of them correspond to famous brand names, other than (according to Complainant) the ADO mark. Respondent asserts that out of nearly 300 mock-up logos, Complainant relied on four alleged examples of logo copying that were never used in conjunction with any goods and services other than the sale of the domain names themselves, namely:
i) a strained comparison of the logo used for <uver.com> to the UBER logo, which is very different as far as Respondent is concerned, and the domain name <uver.com> was registered prior to Uber being in business;
ii) a strained comparison between the logo used for the domain name <nive.com> and the NIKE mark;
iii) an admittedly similar graphical element used for the logo associated with <coru.com>, but with words different than in the BOINC mark; and
iv) the logo for <nuta.com>, which is admittedly similar in terms of the color scheme to the NUTELLA mark, but there was no benefit in creating this mock up, as Respondent states Nutella would have no interest in <nuta.com>, and it was never used for competing goods or services.
(i) Identical or confusingly similar
Respondent acknowledges that Complainant has registered trademarks for the ADO mark in connection with bus services, and accordingly further acknowledges that the trademark and the Domain Name are considered identical for the purposes of the Policy.
(ii) Rights or legitimate interests
Respondent submits that based on precedent under the UDRP, his interest in a generic three-letter domain name that is an acronym and corresponds to dictionary words gives rise to a right or legitimate interest. Furthermore, Respondent states that speculating and investing in generic, “brandable” domain names is a legitimate and well-established business that may confer a legitimate interest in a domain name.
Respondent states that at the time of registration, he had never heard of Complainant or its ADO marks and held the view that no one company could claim exclusive rights in the three-letter acronym. Respondent asserts he has met the criterion established by paragraph 4(c)(i) of the Policy because he has demonstrated preparations to use the Domain Name in conjunction with his software-driven advertising website project. His preparations are evidenced in the acquisition of the Domain Name itself, and his contemporaneous emails with the former registrant where Respondent explained why he wanted the Domain Name. Respondent contends that this demonstrates that prior to any notice of dispute, he prepared to use the Domain Name in connection with a bona fide offering of goods and services. After he acquired the Domain Name, Respondent set-up a landing page to promote the website. This preparation is admittedly modest, however, it is preparation to use in conjunction with a legitimate and bona fide offering of services in accordance with the Policy. As further proof of Respondent’s preparations, Respondent refers to email correspondence with a third-party from whom he sought advice, which pre-dated Respondent’s registration of the Domain Name, and in which Respondent explains his advertising project, thereby lending credibility to his claim that he acquired the Domain Name for the purposes of a bona fide offering of services.
(iii) Registered and used in bad faith
Respondent contends that the Domain Name is composed of a common dictionary word, which weighs against a finding of bad faith registration. Absent proof that a generic domain name was registered for the purpose of profiting from Complainant’s trademark rights, Respondent argues there can be no finding of bad faith registration and use.
Respondent asserts there is no evidence that he registered the Domain Name to sell it to Complainant or that its value was derived exclusively from Complainant’s marks. Further, there is no evidence that Respondent was aware of or ought to have been aware of Complainant. In this regard, Respondent contends that the acronym “ado” has a meaning and function beyond Complainant. There are numerous third parties around the world who use the acronym. The word, “ado” corresponds to a well-known word in French and in English.
Respondent states that his good faith intentions are demonstrated because he never used the Domain Name for PPC advertising or any infringing advertising; he erected a landing page upon registering the Domain Name; he never solicited Complainant; and he provided a plausible and corroborated explanation for why he registered the Domain Name.
While Complainant claims that Respondent used the Domain Name for PPC ads related to land transportation and ticket sales in Mexico between 2011 and 2012, this was done by the prior registrant, not Respondent. Further, while Complainant claims that Respondent began mimicking Complainant’s ADO trademark by copying its colors, design, and general composition, as well as look and feel and trade dress, Respondent states that the only similarity between Complainant’s ADO mark and the mock-up logo Respondent displayed is the color red, albeit different reds. The font is different, as is the look and feel. Complainant has no monopoly on ADO in red, even as a registered trademark. Respondent asserts that even if Complainant’s allegations were true (which they are not), this at most would amount to bad faith use commencing four years after registration, and is not probative of bad faith when the Domain Name was acquired in 2012.
Respondent contends that while Complainant claims Respondent’s use of the Domain Name was intended to take advantage of this confusion to obtain illegal profits, there have been no illegal profits. There was no monetization and no evidence of any attempt to divert people looking for a bus ticket. Respondent argues that if people looking for a bus ticket arrive at the website linked to the Domain Name, this is no fault of Respondent. While Complainant stated that given its worldwide fame, Respondent must have registered the Domain Name because of Complainant, the only evidence of Complainant’s fame is limited to Mexico. Complainant’s EU trademarks were not obtained until after the Domain Name was acquired. Further, Respondent claims he was under no obligation to search foreign trademark registries, and even if he did, he would have found numerous third parties using the ADO mark. Complainant’s acquisition of a Spanish company in 2013 was after the Domain Name was registered, but Complainant’s evidence shows that it carries on business as AVANZA, not ADO, in Spain. Complainant’s claim that it earned USD 5,021 from ticket sales in France between 2016 and 2017 is immaterial both in terms of the small amount and that these sales post-dated the Domain Name registration.
With regard to Complainant assertion that four out of 299 mock-up logos employed by Respondent on the “Catchy.com” website evidence Respondent’s bad faith in registering the Domain Name, Respondent contends that this is weak evidence. If true, Complainant would have found more examples among the 299 logos, and Respondent would have used the domain names in an infringing manner, which he never did.
In response to Complainant’s allegation that Respondent’s bad faith is demonstrated by advertising the Domain Name for sale to the general public, Respondent states that he never in five years solicited Complainant. Respondent contends that if a registrant has a legitimate interest in a domain name, and if it is in the business of investing in short domain names as Respondent does, the registrant is entitled to offer its business asset for sale for whatever price he deems appropriate. The reason that the Domain Name’s price is higher than the other ones offered by Respondent is that the other ones are not dictionary words and contain four letters.
While Complainant complains that Respondent used a privacy service, Respondent states that, as held by previous UDRP panels, the use of privacy services in general is not objectionable. This approach is also supported by the WIPO Overview 3.0, section 3.9, where it is stated that the use of a privacy or proxy registration service is not in and of itself an indication of bad faith. Respondent states that the privacy service assists him in limiting inquiries to the means made available through the website at “www.catchy.com”. Moreover, Respondent’s WhoIs details were not privacy protected for several years after he registered the Domain Name.
6. Discussion and Findings
In order to succeed on its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith.
A. Identical or Confusingly Similar
The Panel finds that Complainant has established strong rights in its longstanding ADO trademark, based on its trademark registrations in Mexico and in several other countries, as well as continuous use and promotion of the mark since as early as 1935 in Mexico, where the mark has been declared well-known by the MIIP.
Further, the Panel determines that the Domain Name is identical to Complainant’s mark, as the Domain Name incorporates the mark in its entirety and adds no other element. In this regard, the Panel observes that Respondent has not disputed that Complainant has rights in its ADO mark in connection with bus services, and that the mark and the Domain Name are considered identical for the purposes of the Policy.
Accordingly, the Panel finds that that the Domain Name is identical to a trademark in which Complainant has rights, in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests and Registered and Used in Bad Faith
The Panel considers that this case presents circumstances in which the analysis of the second and third elements of the Policy are closely related. As noted in section 2.15 of WIPO Overview 3.0, “[i]n some cases…panels assess the second and third UDRP elements together, for example where clear indicia of bad faith suggest there cannot be any respondent rights or legitimate interests. In such cases, panels have found that the facts and circumstances of the case would benefit from a joint discussion of the policy elements.”
Here, the Panel finds that Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in respect of the Domain Name. There is no dispute that Complainant has not authorized Respondent to use its ADO mark; that Respondent is not commonly known by the Domain Name; and that Respondent has not used the Domain Name for a legitimate noncommercial or fair use. The Panel recognizes that the use of the Domain Name for a landing page with PPC links to bus transportation, ticketing and Complainant’s competitors (between 2010 and 2012), as alleged by Complainant, occurred prior to Respondent’s purchase of the Domain Name in June 2012. However, Complainant also alleges (and submitted evidence to support its contentions) that:
- any alleged meaning for the term “ado” is not being referenced or used on the webpage to which the Domain Name resolves;
- the website to which the Domain Name resolves features a logo that mimics Complainant’s ADO trademark in red capital letters, along with the phrase “Do you like this domain? Make an offer!’’, thereby communicating that the Domain Name is being auctioned for sale or rent through Respondent’s website at <catchy.com>;
- Respondent is a professional domainer who understands the value of brands and by using a logo that mimics Complainant’s ADO trademark, Respondent is heightening the relevance of the Domain Name to increase its market value as a consequence of the traffic generated by it. Complainant also provides several other examples where Respondent has attempted to mimic the general composition of the logos associated with certain well-known trademarks in an attempt to enhance the value (and chances for sale) of the corresponding domain names in Respondent’s portfolio;
- the “Catchy.com” website contains the statements “The owner of ado.com is looking for a sale around $500.000” and “Rent this domain for $5,000/month.” Complainant demonstrates that the Domain Name is being offered at the price of USD 500,000, which greatly exceeds the purchase price (USD 27,500) and is much higher than the price for other domain names being auctioned on Respondent’s “Catchy.com” website. Complainant contends that this high price can only be attributed to Respondent’s understanding of the recognition of Complainant’s ADO mark.
- Respondent was aware of Complainant’s trademarks and their level of recognition when it purchased the Domain Name;
- Respondent was bound to make sure that the Domain Name did not infringe on the rights of any third party trademarks, pursuant to paragraph 2 of the Policy and in accordance with the registration agreement executed by Respondent for the Domain Name.
Section 2.1 of WIPO Overview 3.0 states that “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name.”
As to Respondent’s showing, the Panel determines that he has failed to rebut Complainant’s prima facie case. According to Respondent, he is a professional domainer whose business model involves investing in generic, non-infringing, made-up acronyms as domain names for development or resale. To that end he operates the “Catchy.com” website, which is represented as “the only domain marketplace dedicated to catchy short brands.” Respondent thus contends that his interest in the generic three-letter Domain Name, which is an acronym and corresponds to dictionary words, gives rise to a right or legitimate interest. Furthermore, Respondent contends that speculating in domain names is a legitimate business that may confer a legitimate interest in a domain name.
“Panels have recognized that merely registering a domain name comprised of a dictionary word or phrase does not by itself automatically confer rights or legitimate interests on the respondent; panels have held that mere arguments that a domain name corresponds to a dictionary term/phrase will not necessarily suffice. In order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trademark rights.”
Moreover, section 2.10.2 provides that “[f]or a respondent to have rights or legitimate interests in a domain name comprising an acronym, the respondent’s evidence supporting its explanation for its registration (and any use) of the domain name should indicate a credible and legitimate intent which does not capitalize on the reputation and goodwill inherent in the complainant’s mark.”
Here, the record establishes that Respondent negotiated directly with the previous registrant to purchase the Domain Name for USD 27,500. The correspondence between them shows that Respondent was aware that the Domain Name was being used by the prior registrant for a landing page with PPC links that were generating revenue; these PPC links were targeting Complainant’s services. Indeed, the prior registrant relied on the earnings from the PPCs links as a reason to bargain for a higher purchase price from Respondent. For example, a screenshot of the website linked to the Domain Name from April 2012 (shortly before Respondent’s acquisition of the Domain Name in June 2012) reflects PPC links including the following: “Ado com MX”, “Bus Transportation”, “Autobuses Pasajeros”, and “Bus Lines”. Although Complainant has substantiated that its ADO trademark rights are longstanding, well-established and well-known in at least Mexico, Respondent represented that he had never been to Mexico and had never heard of Complainant or its ADO marks when he acquired the Domain Name. This does not quite resolve the matter, however; in view of Respondent’s specialized expertise as a professional domainer and his knowledge of the prior use of the Domain Name for PPC links, the Panel finds it difficult to believe that Respondent’s due diligence before paying USD 27,500 for the Domain Name would not have identified that to some extent (especially in light of Respondent’s proposed sale price, discussed below), the value of the Domain Name related to Complainant’s mark.
In light of the foregoing, and in view of Respondent’s position as a professional domainer who admittedly focuses on branding, the Panel considers, on the balance of the probabilities, that it more likely than not that Respondent was aware of Complainant and its ADO mark when purchasing the Domain Name, which Respondent is currently offering for sale for USD 500,000. Alternatively, even in the event that Respondent may not have been personally familiar with Complainant and its ADO marks, that does not excuse willful blindness in this case, as it seems apparent from the record that even a cursory investigation by Respondent would have disclosed Complainant’s mark especially given the use made of the Domain Name of which Respondent was aware when negotiating for the Domain Name. See WIPO Overview 3.0, section 3.2.3 (Willful blindness and the duty to search for and avoid trademark-abusive registrations), which states in relevant part that (i) “especially domainers undertaking bulk purchases or automated registrations have an affirmative obligation to avoid the registration of trademark-abusive domain names,” and (ii) in view of “registrant obligations under UDRP paragraph 2, panels have…found that respondents who (deliberately) fail to search and/or screen registrations against available online databases would be responsible for any resulting abusive registrations under the concept of willful blindness.”). In any event, the circumstances here strike the Panel as a case where a sophisticated (domainer) respondent tries to claim ignorance as to bad faith registration and thereafter openly uses the domain name to engage in bad faith use.
The Panel finds that this analysis not only points to a lack of any rights or legitimate interests in the Domain Name on the part of Respondent, but also supports a finding of bad faith registration. See also WIPO Overview 3.0, section 2.10.1 (indicating that “Panels also tend to look at factors such as the status and fame of the relevant mark”).
Respondent claims that he initially acquired the Domain Name to develop a software-driven advertising website project, but that he subsequently lost interest in the project. However, WIPO Overview 3.0, section 2.11, states that UDRP panels “tend to assess claimed respondent rights or legitimate interests in the present, i.e., with a view to the circumstances prevailing at the time of the filing of the complaint.” Respondent’s current use of the Domain Name is that it is offered for sale at a price of USD 500,000, far in excess of Respondent’s purchase price for the Domain Name (USD 27,500) which itself could be accepted but for the relation to the price of the other similar domain names in Respondent’s portfolio. Moreover, Complainant has made credible arguments, supported by evidence, that Respondent has imitated Complainant’s ADO logo (and the logos of certain other well-known trademarks corresponding to other domain names in Respondent’s portfolio) in an attempt to enhance the value of the Domain Name.
In view of Respondent’s business (selling and renting domain names) and this current use of the Domain Name, the Panel finds that there is insufficient evidence of any demonstrable preparations by Respondent to use the Domain Name in connection with a bona fide offering of goods or services. WIPO Overview 3.0, section 3.1 states that “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark.” Here, Complainant contends that the registration of the Domain Name falls within the scope of paragraph 4(b)(i) of the Policy, as Respondent registered it for the purpose of selling or renting it for valuable consideration in excess of the normal out-of-pocket costs, and now attempts to capitalize on the goodwill associated with Complainant ADO mark by requesting an exorbitant list price, coupled with the use of a similar logo. In view of this current use of the Domain Name, which it is offered for sale at a price of USD 500,000, far in excess of Respondent’s purchase price and, moreover, as compared to other similar three or four letter domain names in Respondent’s portfolio (which were listed at a vastly lower sum), the Panel determines that the Domain Name is being used in bad faith.
In conclusion, the Panel determines that, for all of the above reasons, the Domain Name was registered and is being used in bad faith. Accordingly, Complainant has satisfied the second and third element 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 Domain Name, <ado.com>, be transferred to Complainant.
Christopher S. Gibson
William R. Towns
David H. Bernstein
Date: February 1, 2018
Addendum: following the Panel Decision in this case, the parties informed WIPO that they reached an agreement which has been endorsed by the United States District Court for the District Of Colorado, Case 1:18 cv-00347-NYW (Agreed Motion for Dismissal and Order Granting the same).