WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fundación TV Azteca, A.C. v. PrivacyGuardian.org / Vasilev Aleksandr

Case No. D2019-1396

1. The Parties

The Complainant is Fundación TV Azteca, A.C., Mexico, represented by TMI Abogados, Mexico.

The Respondent is PrivacyGuardian.org, United States of America (the “United States” or “U.S.”) / Vasilev Aleksandr, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <fundacionaztecaguatemala.org> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2019. On June 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 18, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 25, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 30, 2019.

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 the Respondent of the Complaint, and the proceedings commenced on July 2, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 22, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 25, 2019.

The Center appointed Christopher J. Pibus as the sole panelist in this matter on August 1, 2019. 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 Mexican non-profit organization founded in 1997 by Ricardo Salinas Pliego. The foundation promotes social responsibility, focusing on improving health, nutrition, education and preserving the environment. The Complainant has collaborated with other organizations, private companies and individuals to sponsor programs in these fields such as: Esperanza Azteca, Limpiemos Nuestro México, Movimiento Azteca, Vive Sin Drogas, A Quien Corresponda, Juguetón and Plantel Azteca. Over the years, Fundación Azteca has awarded 12,900 scholarships for low-income junior-high school and high school students. The Complainant has a social media presence on Facebook, Twitter, Youtube, and Instagram. The Complainant’s profile on Twitter has 25,500 followers.

The Complainant owns several trademark registrations for FUNDACION AZTECA, all of them for services in Class 36 of the International Classification, in Mexico, Guatemala, the U.S., and Peru, as follows:

Mexican Trademark Registration No. 1141606 for FUNDACION AZTECA Design dated February 8, 2010;
Mexican Trademark Registration No. 1141607 for FUNDACION AZTECA dated February 8, 2010;
Guatemalan Trademark Registration No. 167080 for FUNDACION AZTECA Design dated January 17, 2010;
Guatemalan Trademark Registration No. 169393 for FUNDACION AZTECA dated April 25, 2010;
U.S. Trademark Registration No. 1141606 for FUNDACION AZTECA Design dated July 7, 2014;
Peruvian Trademark Registration No. S00057743 for FUNDACION AZTECA Design dated June 18, 2009;
Peruvian Trademark Registration No. S00057744 for FUNDACION AZTECA dated June 18, 2009.

The Complainant registered the disputed domain name <fundacionaztecaguatemala.org> in March, 2009 and used the domain name continuously until its renewal date in March, 2019.

The Respondent acquired the disputed domain name on May 22, 2019 and at the time the Complaint was filed the disputed domain name reverted to third party pornographic websites.

The Complainant made an offer to purchase the disputed domain name from the Respondent, which until the filing of the Complaint has remained unanswered.

5. Parties’ Contentions

A. Complainant

The Complainant owns several trademark registrations for the mark FUNDACION AZTECA Design and the word mark FUNDACION AZTECA in Guatemala, Peru, Mexico, and the U.S. The Complainant submits the disputed domain name is confusingly similar to the Complainant’s registered trademark rights, because it replicates the Complainant’s trademark FUNDACION AZTECA in its entirety. The only additional word is the geographical term Guatemala, which is a country where the Complainant has a significant presence. The website associated with the disputed domain name directs Internet users to pornographic and prostitution‑related sites in the Spanish language.

The Complainant contends that the Respondent has no legitimate right or interests in the disputed domain name. The Respondent is not commonly known by the name. The Respondent has not been authorized or licensed to use the Complainant’s trademark. Further, the Respondent is not using the disputed domain name in association with a bona fide offering of goods and services. The disputed domain name reverts to third party pornographic websites for the purposes of monetary gain.

The Complainant has used the disputed domain name continuously for ten years, and through unforeseen events mistakenly failed to renew the disputed domain name. The Respondent took advantage of the situation and acquired the disputed domain name with knowledge of the Complainant and the Complainant’s trademark rights in May 22, 2019. The Respondent has not responded to the Complainant’s offer to purchase the disputed domain name. The disputed domain name had previously been used by the Complainant in association with philanthropic activities and events, and Internet users will be misled into accessing Respondent’s website when looking for the Complainant. The Respondent’s conduct is damaging to the reputation of the Complainant.

B. Respondent

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, the Complainant must establish each of the following elements:

(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interest in respect of the disputed domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant does have registered trademark rights in FUNDACION AZTECA by virtue of the trademark registrations listed in paragraph 4 above.

The Panel finds that the disputed domain name <fundacionaztecaguatemala.org> is confusingly similar to the Complainant’s trademark, as the disputed domain name replicates the Complainant’s FUNDACION AZTECA trademark except for the addition of the geographical term Guatemala. The Panel notes that the Complainant has a significant presence in Guatemala and the addition of the country name does not serve to prevent the finding of confusing similarity in any way.

Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Useful commentary relating to the burden of proof for rights or legitimate interests can be found at the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1:

“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

Based on the evidence filed in this proceeding, the Panel finds that the Complainant has made out a prima facie case with respect to lack of rights and legitimate interests. The Complainant clearly owns rights in the FUNDACION AZTECA trademark as noted in paragraph 4 of this Decision. The evidence filed in this proceeding, which was not contested by the Respondent, supports the fact that the Respondent was aware of the Complainant’s trademark. In this respect, the Panel notes that the Complainant used to own the disputed domain name, and the Respondent chose to replicate the Complainant’s mark in its entirety and then combine it with the geographical descriptor Guatemala, where the Complainant has a significant reputation and activity.

The Respondent was not authorized or licensed to use the Complainant’s trademark, and the Respondent is not commonly known by the name FUNDACION AZTECA. The Respondent has used a confusingly similar domain name in association with a website which links to third party sites which feature pornographic and prostitution-related content. This conduct does not support a finding of a bona fide offering of goods and/or services in association with the disputed domain name.

In this situation, the burden shifts to the Respondent to bring forward evidence of rights and legitimate interests. The Respondent did not respond to the Complaint.

Accordingly, the Panel finds that the Complainant is deemed to have satisfied the requirements under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

As set out above, the Panel is prepared to find that the Respondent was aware of the Complainant’s trademark rights in the FUNDACION AZTECA mark when it registered the disputed domain name <fundacionaztecaguatemala.org>. As set out above, this conclusion is supported by the fact that the Respondent acquired the disputed domain after many years of use by the Complainant for philanthropic purposes, and is using the disputed domain name to revert to websites which feature pornographic and prostitution-related content, all of which is directly contrary to the prior services and activities of the Complainant. This conduct is compelling evidence of bad faith and abusive conduct contrary to the Policy.

The Panel is prepared to accept the claims made by the Complainant, and finds that the Respondent registered and has used the disputed domain name in bad faith.

The Complainant has therefore satisfied the requirements under paragraph 4(a)(iii) of the Policy.

7. Decision

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 <fundacionaztecaguatemala.org> be transferred to the Complainant.

Christopher J. Pibus
Sole Panelist
Date: August 19, 2019