WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

MercadoLibre, Inc. and Tech Fund S.R.L. v. WhoisGuard Protected, WhoisGuard, Inc. / Matii Tapee

Case No. D2021-0685

1. The Parties

The Complainants are MercadoLibre, Inc., United States of America (“United States” or “U.S.”), and Tech Fund S.R.L., Uruguay, represented by Adams and Reese LLP, United States.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama, / Matii Tapee, Argentina.

2. The Domain Name and Registrar

The disputed domain name <mercadolibre.live> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2021. On March 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 8, 2021, 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 Complainants on March 9, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on March 9, 2021. In response to a notification by the Center that the Complaint was administratively deficient, the Complainants filed a new amendment to the Complaint on March 12, 2021.

The Center verified that the Complaint, together with the amended Complaints, 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 March 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 4, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 6, 2021.

The Center appointed Edoardo Fano as the sole panelist in this matter on April 14, 2021. 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 Panel has not received any requests from the Complainants or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.

Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to the Respondent”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a response from the Respondent.
The language of the proceeding is English, being the language of the Registration Agreement, as per paragraph 11(a) of the Rules.

4. Factual Background

The Complainants are MercadoLibre, Inc. and its subsidiary Tech Fund S.R.L, a U.S. company and a Uruguayan company respectively, providing e-commerce platforms in eighteen different countries and owning several trademark registrations for MERCADO LIBRE, among which:

- Panama Trademark Registration No. 113180 01 for MERCADO LIBRE and design, registered on March 6, 2001;

- Panama Trademark Registration No. 268151 01 for MERCADO LIBRE and design, registered on August 23, 2018;

- United States Trademark Registration No. 88950198 for MERCADO LIBRE and design, registered on June 5, 2020;

- United States Trademark Registration No. 88950207 for MERCADO LIBRE and design, registered on June 5, 2020.

The Complainants operate on the Internet at the main website “www.mercadolibre.com”, as well as with many other generic Top-Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”) including the trademark MERCADO LIBRE.

The Complainant provided evidence in support of the above.

According to the WhoIs records, the disputed domain name was registered on November 24, 2020, and when the Complaint was filed the disputed domain name redirected to an inactive website, although previously it was apparently used to distribute malware.

On December 18, 2020, the Complainants’ lawyers sent a cease-and-desist letter to the Respondent and the Respondent did not reply.

5. Parties’ Contentions

A. Complainants

The Complainants state that the disputed domain name <mercadolibre.live> is confusingly similar to their trademark MERCADO LIBRE, as the disputed domain name wholly contains the Complainants’ trademark.

Moreover, the Complainants assert that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it has not been authorized by the Complainants to register the disputed domain name or to use their trademark within the disputed domain name, it is not commonly known by the disputed domain name, nor is it making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.

The Complainants submit that the Respondent has registered the disputed domain name in bad faith, since the Complainants’ trademark MERCADO LIBRE is distinctive and internationally known. Therefore, the Respondent targeted the Complainants’ trademark at the time of registration of the disputed domain name and the Complainants contend that the passive holding of the disputed domain qualifies as bad faith registration and use.

B. Respondent

The Respondent has made no reply to the Complainants’ contentions and is in default. In reference to paragraphs 5(f) and 14 of the Rules, no exceptional circumstances explaining the default have been put forward or are apparent from the record.

A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences, in accordance with paragraph 14(b) of the Rules, may be drawn (see, e.g., Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL INTERNATIONAL PLC v. MARK FREEMAN, WIPO Case No. D2000-1080; ALTAVISTA COMPANY v. GRANDTOTAL FINANCES LIMITED et. al., WIPO Case No. D2000-0848; and Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total S.A., WIPO Case No. D2007-0288).

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:

(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 has been registered and is being used in bad faith.

A. Consolidation of Multiple Complainants

The Complaint and the amendment to the Complaint were filed by two Complainants, and the Complainants have requested consolidation of multiple complainants. No objection to this request was made by the Respondent.

Pursuant to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1: “[a]ssessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation”.

The Panel finds that there is sufficient evidence that the Complainants have common grievance against the Respondent, who has engaged in a common conduct that has affected both of them, and that the consolidation would be procedurally efficient and equitable. The Panel further notes that the Respondent did not object to the consolidation request. The Panel therefore accepts the Complainants’ consolidation request.

For the purpose of this decision, the “Complainant” will refer to both the Complainants.

B. Identical or Confusingly Similar

The Panel finds that the Complainant is the owner of the trademark MERCADO LIBRE both by registration and acquired reputation and that the disputed domain name <mercadolivre.live> is confusingly similar to the trademark MERCADO LIBRE.

It is also well accepted that a gTLD, in this case “.live”, may be ignored when assessing the similarity between a trademark and a domain name (see, e.g., VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607; and WIPO Overview 3.0, section 1.11).

The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain name is confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i).

C. Rights or Legitimate Interests

The Respondent has failed to file a response in accordance with the Rules, paragraph 5.

The Complainant in its Complaint, and as set out above, has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. It asserts that the Respondent, who is not associated with the Complainant in any way, is not using the disputed domain name for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services.

The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain name, and the Panel is unable to establish any such rights or legitimate interests on the basis of the evidence in front of it.

The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that “[…] for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that [the Respondent has] registered or has 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 the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

(ii) that [the Respondent has] 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 [the Respondent has] engaged in a pattern of such conduct; or

(iii) that [the Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [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 [the Respondent’s] website or location or of a product or service on [the Respondent’s] website or location”.

Regarding the registration in bad faith of the disputed domain name, the reputation of the Complainant’s trademark MERCADO LIBRE in the field of e-commerce platforms is clearly established and the Panel finds that the Respondent likely knew of the Complainant and deliberately registered the disputed domain name.

As regards the use in bad faith of the disputed domain name, pointing to an inactive website, the Panel considers that bad faith may exist even in cases of so-called “passive holding”, as found in the landmark UDRP decision Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In the circumstances of this case, the Panel finds that such passive holding amounts to bad faith.

The Panel finds that the Complainant has presented evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain name in bad faith.

The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied.

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 <mercadolibre.live> be transferred to the Complainant.

Edoardo Fano
Sole Panelist
Date: April 16, 2021