WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
YPF S.A. v. Whois Agent, Domain Protection Services, Inc. / Cesar de Leon
Case No. D2019-1674
1. The Parties
Complainant is YPF S.A., Argentina, represented by Berken IP, Argentina.
Respondent is Whois Agent, Domain Protection Services, Inc., United States of America /Cesar de Leon, Mexico.
2. The Domain Name and Registrar
The disputed domain name <serviclub.net> is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 16, 2019. On July 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name and another which was removed (and is the subject of a separate case) after the underlying registrant was revealed by the registrar. On July 17, 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 Complainant on July 18, 2019 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 July 22, 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 Respondent of the Complaint, and the proceedings commenced on July 26, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 15, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 19, 2019.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on August 26, 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
Complainant is an energy company based in Argentina. Complainant is a leader in the field, and has been named by BrandZ as one of the top 50 most valuable brands in Latin America.
For several decades, Complainant has offered a loyalty program under its marks YPF SERVICLUB, SERVICLUB YPF, and SERVICLUB, through which Complainant offers discounts and prize drawings. Complainant has several registered trademarks including for YPF SERVICLUB, Argentinian Registration Nos. 2722839 (registered 2015); and SERVICLUB YPF, Argentinian Registration Nos. 2894628 (registered 2017); 1561786 (registered 1995); and 1561786 (registered 1995).
Complainant also owns the registration for domain names incorporating its marks. This includes <serviclub.com.ar> (registered 1998). Complainant uses this domain name and associated websites to inform customers about its SERVICLUB marks and its loyalty program, including offers for discounts and prize drawings.
The disputed domain name <serviclub.net> appears to have been registered on August 27, 2014. Respondent has no affiliation with Complainant. Respondent has used the disputed domain name to resolve to a website that mimics the official website of Complainant, and includes mention of Complainant’s YPF SERVICLUB, and which mentions offers of discounts and prize drawings. Complainant has not authorized any activities by Respondent, nor any use of its trademarks thereby.
5. Parties’ Contentions
Complainant contends that: (i) disputed domain name <serviclub.net> is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.
In particular, Complainant contends that it has trademark rights and registrations for the marks YPF SERVICLUB, SERVICLUB YPF, and SERVICLUB, as well as domain name registrations incorporating the marks. Complainant contends that Respondent has merely used the disputed domain name to set up a website meant to lure in customers looking for Complainant and its services. Complainant further contends that Respondent has no rights or legitimate interests in the registration or use of the disputed domain name. Rather, Complainant contends that Respondent has acted in bad faith in setting up the website, when Respondent clearly knew of Complainant’s rights.
Respondent did not file a reply to Complainant’s contentions in this proceeding.
6. Discussion and Findings
A. Identical or Confusingly Similar
This Panel must first determine whether the disputed domain name <serviclub.net> is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name directly incorporates a trademark in which Complainant has established rights, with several decades of use.
The Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain name at issue in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that Respondent has been “commonly known by the domain name”; or (iii) “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”.
Respondent did not submit a reply to the Complaint, however. Rather, as mentioned in Section 4 of this Panel’s decision, Respondent has used the disputed domain name to divert Internet users to a website that mimics Complaint’s website but which is unaffiliated with Complainant or Complainant’s services. Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in the disputed domain name, which Respondent has not rebutted, thereby satisfying paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [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 [respondent’s] website or location or of a product or service on [the] website or location”. As noted in Section 4 of this Panel’s decision, Respondent has set up the disputed domain name to resolve to a website that mimics the official website of Complainant, and which purports to provide information about Complainant’s services under the SERVICLUB mark. Hence, Respondent is trading on the goodwill of Complainant’s trademarks to attract Internet users, presumably for Respondent’s own commercial gain. Given the nature of the site content and the disputed domain name, which incorporates the mark SERVICLUB and which reference Complainant’s services, the Panel finds sufficient evidence that Respondent registered and used the disputed domain name with knowledge of Complainant’s prior rights, thereby evidencing bad faith.
Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy.
For all 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 <serviclub.net> be transferred to Complainant.
Dated: September 9, 2019