WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Roberto Federico Wille Buschmann and Industrial Esco-will, S.A. de C.V. v. STX – Dominios, STX
Case No. D2017-2581
1. The Parties
The Complainants are Roberto Federico Wille Buschmann and Industrial Esco-will, S.A. de C.V.1 of Mexico City, Mexico, represented by Joel Alejandro Gómez Treviño, Mexico. For ease of reference, the Complainants are jointly referred to as “the Complainant”, unless otherwise stated.
The Respondent is STX – Dominios, STX of Zapopan, Mexico.
2. The Domain Name and Registrar
The disputed domain name <escowill.com> 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 December 23, 2017. On December 26, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 26, 2017, 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 proceedings commenced on January 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 25, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 1, 2018.
The Center appointed Reynaldo Urtiaga Escobar as the sole panelist in this matter on February 14, 2018. 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 Complaint was filed in English, this being the language of the registration agreement for the disputed domain name, as confirmed by the Registrar.
4. Factual Background
The Complainant Roberto Federico Wille Buschmann is a shareholder and legal representative of the Co-complainant Industrial Esco-will, S.A. de C.V., a Mexican manufacturer of PET2 plastic bottles and canisters for the pharmaceutic, food, and cosmetics industries.
The Complainant Roberto Federico Wille Buschmann owns the following Mexican trademark registrations:
No. 1018664, registered on December 17, 2007, for ESCO-WILL, covering products in international class 3;
No. 1484806, registered on October 2, 2014, for ESCOWILL, covering products in international class 17;
No. 1498245, registered on December 1, 2014, for ESCOWILL, covering services in international class 35;
The above trademark registrations are licensed to the Co-complainant Industrial Esco-will, S.A. de C.V., as recorded by the Mexican Institute of Industrial Property.
The disputed domain name was registered on January 6, 2010, and currently redirects its visitors to “www.multiplastic.com.mx”, a website operated by Multi Plastic, S.A. de C.V, a Mexican company based in Zapopan, Jalisco, that is in the same line of business as the Complainant.
5. Parties’ Contentions
In summary, the Complainant contends as follows:
i) at first glance, the disputed domain name is identical to Complainant’s trademarks, trade name, and corporate name;
ii) the Respondent registered the disputed domain name seven years after the Complainant registered its oldest domain name <escowill.com.mx> and three years after the Complainant registered its oldest trademark ESCO-WILL (Reg. No. 1018664);
iii) the Respondent is not authorized to register or use the Complainant’s marks;
iv) the Respondent is not commonly known as “escowill”, according to Google and Yahoo searches carried out by the Complainant;
v) considering the Respondent is Mexican, the Complainant conducted “escowill” trademark searches, which yielded results related to the Complainant;
vi) the Respondent is a domain name seller or a website developer, as inferred by the fact that the disputed domain name redirects users to “www.multiplastic.com.mx”, a website owned by a company which is a direct competitor of Complainant;
vii) the disputed domain name’s use is not bona fide according to UDRP precedents cited in the Complaint;
viii) an Affidavit of Facts made on August 28, 2017 by Commercial Notary No. 49 in Mexico City attests to the redirecting of the disputed domain name to “www.multiplastic.com.mx”;
ix) the Respondent intentionally attempted to attract, for commercial gain, Internet users to “www.multiplastic.com.mx” by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or a product on the Respondent’s website;
x) by using the disputed domain name to redirect Internet users to a Complainant’s competitor’s website, it is clear that the disputed domain name was registered primarily for the purpose of disrupting the business of a competitor.
The Respondent did not reply to the Complainant’s contentions.
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
As condensed in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the test for confusing similarity under the UDRP involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark(s).
The Complainant has proved to have registered trademark rights in the terms ESCOWILL and ESCO-WILL.
The Panel observes that the disputed domain name exclusively consists of the Complainant’s ESCOWILL mark.
The disputed domain name is therefore identical to the Complainant’s ESCOWILL mark.
The Panel further finds that that the disputed domain name is confusingly similar to the Complainant’s ESCO-WILL mark.
Accordingly, the Complainant has fulfilled the standing requirement of Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the disputed 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.”
As noted in section 2.1 of the WIPO Overview 3.0, the onus is on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the disputed domain name. However, because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see also, e.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306).
First, the Complainant represents to not have authorized the Respondent to use the ESCOWILL and ESCO‑WILL marks. Second, the Complainant submits that the Respondent is not commonly known by the disputed domain name. Third, the Complainant alleges that the disputed domain name’s redirecting to a competitor’s website is neither bona fide nor legitimate under the Policy.
In light of the above submissions, which are supported by, or inferred from, the record, the Panel finds that the Complainant has put forward a prima facie case on the second element.
Because the Respondent did not refute the allegations raised by the Complainant, the Panel may accept all reasonable and supported allegations and inferences made in the Complaint as true. See, Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403 (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint) and also Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse, WIPO Case No. D2000-1221 (finding that the respondent’s failure to respond can be construed as an admission that it has no rights or legitimate interests in the disputed domain name).
Further, in the Panel’s view, the redirecting of the disputed domain name to a website offering similar and competing products to those marketed by the Complainant, is neither a bona fide offering of goods nor a legitimate noncommercial or fair use of the disputed domain name under subparagraphs (i) and (iii) of Policy paragraph 4(c). See OfficeMax, Inc. and OMX, Inc. v. Yong Li, WIPO Case No. D2003-0060 (The deliberate use of a confusingly similar domain name to redirect Internet users to a competitor's website, cannot grant respondent rights or legitimate interests in the disputed domain name).
The Panel therefore finds that the Respondent has no rights or legitimate interests within the meaning of paragraph 4(a)(ii) of the Policy.
Consequently, the Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
Pursuant to Policy, paragraph 4(a)(iii), in order to be granted relief, the Complainant must show that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets forth the following non-exclusive grounds of bad faith registration and use:
“(i) circumstances indicating that you [the respondent] have registered or 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 [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) you [the respondent] have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you [the respondent] have engaged in a pattern of such conduct; or
(iii) you [the respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you [the respondent] have intentionally attempted to attract, for commercial gain, Internet users to your [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your [the respondent’s] website or location or of a product or service on your [the respondent’s] website or location.”
For the purposes of this element, the Panel will rely on the Complainant’s mark ESCO-WILL alone, for same predates the disputed domain name by more than three years, while the ESCOWILL marks were registered after the Respondent’s registration of the disputed domain name.3
The Panel notes that, apparently, ESCO-WILL is a fanciful mark, for, according to the Complaint, it was coined with fragments of the family names Wille and Escobedo4 .
As such, it does not seem to be a term that the Respondent would legitimately choose unless seeking to create the impression of an association with the Complainant. See Inter-IKEA Systems B.V. v. Evezon Co. Ltd., WIPO Case No. D2000-0437.
The Panel finds that, by using the disputed domain name to trade PET plastic bottles, in competition with the Complainant, the Respondent has diverted Internet traffic from the Complainant’s website, to www.multiplastic.com.mx, which in the Panel’s view amounts to bad faith under subparagraphs (iii) and (iv) of Policy paragraph 4(b). See Beronata Services Ltd v. Private Registration, Account Privacy / Suren Akopian, WIPO Case No. D2017-1796 (respondent’s redirecting to another domain name providing services in competition with the complainant, evidences bad faith registration and use).
The above circumstances, taken together, persuade the Panel that the disputed domain name was registered and has been used in bad faith within the realm of the Policy.
Thereby, the Complainant has discharged its burden in relation to paragraph 4(a)(iii) 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 <escowill.com> be transferred to the Complainant.
Reynaldo Urtiaga Escobar
Date: March 6, 2018
1 Though “Industrial Escowill, S.A. de C.V” is identified as Co-complainant in the party-naming section of the Complaint, the pertinent Articles of Incorporation refer to “Industrial Esco-will, S.A. de C.V.”, which is also the company name used within the Complaint itself.
2 Polyethylene Terephthalate.
3 Even if the ESCOWILL marks claim, in their corresponding registration certificates, a date of first use of November 26, 2007. As stated in section 3.8.1 of the WIPO Overview 3.0 “where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent. This would not, however, impact a panel’s assessment of a complainant’s standing under the first UDRP element”.
4 Belonging to the Complainant’s father.