WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
MercadoLibre Chile Limitada v. Juan Riquelme Rojas
Case No. D2021-0941
1. The Parties
The Complainant is MercadoLibre Chile Limitada, Chile, represented by Magliona Abogados, Chile.
The Respondent is Juan Riquelme Rojas, Chile.
2. The Domain Name and Registrar
The disputed domain name <mercadolibreltda.com> 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 March 29, 2021. On March 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 30, 2021, 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 April 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 26, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 28, 2021.
The Center appointed Alejandro Garcia as the sole panelist in this matter on May 5, 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.
4. Factual Background
A. The Complainant
The Complainant is the Chilean branch of MercadoLibre Inc., a company that operates online marketplaces dedicated to e-commerce throughout Latin America. MercadoLibre Inc. was founded in 1999, incorporated in the United States and is listed on the NASDAQ stock exchange. According to the Complainant, MercadoLibre Inc. is the leading e-commerce company in Latin America.
B. The Complainant’s Trademark
At Annex 3 of the Complaint, the Complainant has provided evidence showing that it holds five registrations for its trademarks in Chile.
In particular, it holds three national Chilean registrations for the MERCADO LIBRE trademarks: No. 1326203,registered on April 24, 2020 protecting services in Class 35; No. 1305574, registered on June 14, 2021,protecting services in Class 41; and No. 1302484, registered on March 1, 2019, protecting goods and services in Classes 9, 16, 35, 36, 38, 39, 42, 43 and 45.
In addition, the Complainant also holds at least one national Chilean trademark registration for the MERCADOLIBRE.COM trademark: No. 909714, registered on November 4, 2010, which protects services in classes 35, 38 and 42 until December 12, 2030.
The Panel is satisfied that the Complainant has evidenced rights to the trademarks MERCADO LIBRE and MERCADOLIBRE.COM for the purposes of the present decision.
C. The Complainant’s Domain Name
According to the WhoIs database, the Complainant registered the domain name <mercadolibre.com> on May 8, 1999, thus predating the registration of the disputed domain name.
D. The Respondent
The Respondent did not participate in these proceedings. The disputed domain name was registered on January 5, 2021 and it used to resolve directly to the Complainant’s website at “www.mercadolibre.com”.
At the time of filing of the Complaint, and as of the date of this decision, the disputed domain name does not resolve to an active website.
5. Parties’ Contentions
Identical or Confusingly Similar
The Complainant states that the disputed domain name is identical or confusingly similar to the MERCADO LIBRE and MERCADOLIBRE.COM trademarks, in respect of which it has rights.
In particular, the Complainant argues that the MERCADO LIBRE trademark is reproduced in its entirety in the disputed domain name, without incorporating a differentiating element, thereby creating a high risk of confusion with the Complainant’s registered trademarks and commercial identity. In addition, the Complainant avers that, at relevant times, the website linked to the disputed domain name used to resolve directly to the Complainant’s website at “www.mercadolibre.com”, leading third parties to reasonably believe that that the disputed domain name is registered with the Complainant, which is not correct.
Rights or Legitimate Interests
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name as required by paragraph 4(a)(ii) of the Policy.
In particular, the Complainant states that the Respondent does not have any kind of authorization from the Complainant to use the trademark MERCADO LIBRE or to apply for the use of any domain name incorporating, totally or partially, such trademark. Moreover, the Complainant states that the Respondent is not “commonly known by the disputed domain name”, the Respondent has not used, or made “demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services”, and has not made a “legitimate noncommercial or fair use of the disputed domain name”.
Registered and Used in Bad Faith
The Complainant contends that the disputed domain name has been registered and is used in bad faith. In this respect, the Complainant asserts, with the support of uncontroverted documentary evidence, that the Respondent attempted to use the disputed domain name to attract third parties for its own commercial gain.
According to the Complainant, the Respondent deliberately impersonated an employee of the Complainant by sending email communications from an email address containing the disputed domain name, and purporting to have been sent by the relevant employee (the latter has since categorically denied having sent the aforementioned emails, according to the Complainant). In particular, the Complainant states that the aforementioned email address was used to send falsified purchase orders to third party suppliers, containing the Complainant’s trademark name and logo and allegedly authorized by the Complainant’s accounting department. The Complainant contends that the purpose of this conduct was to mislead these suppliers into delivering merchandise to the Respondent, under the pretence that the goods were intended for delivery to the Complainant.
The Complainant argues that the above actions constitute crimes of fraud, forgery and malicious use of a private instrument in Chile.
The Respondent did not reply to the Complainant’s contentions.1
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the domain name holder is to submit a mandatory administrative proceeding in the event that a third party (complainant) asserts to the Center that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the domain name holder has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, the Complainant is required to establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Panel finds that the Complainant has provided uncontested evidence to establish that it has rights over the trademarks MERCADO LIBRE and MERCADOLIBRE.COM.
The disputed domain name consists of the whole of the Complainant’s trademark MERCADO LIBRE along with the letters “ltda”. The addition of these letters, simply an abbreviation of the Spanish term “limitada”, which is an indicator of a limited liability company of common use, does not prevent the Complainant’s trademark MERCADO LIBRE from being recognizable in the disputed domain name.
In this respect, section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 3.0”) indicates:
“It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.
This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. (This may also include recognizability by technological means such as search engine algorithms.) In some cases, such assessment may also entail a more holistic aural or phonetic comparison of the complainant’s trademark and the disputed domain name to ascertain confusing similarity.
While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”
Section 1.8 of the WIPO Overview 3.0 indicates:
“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.”
The Panel also notes that the use of the term “ltda” means that the whole name of the Complainant, itself a limited liability company, is contained in the disputed domain name.
The Panel therefore finds that paragraph 4(a)(i) has been satisfied based upon the disputed domain name being confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three non-exclusive examples under which a respondent can demonstrate that it has rights or legitimate interests in a domain name:
“(i) before any notice […] of the dispute, [the respondent’s] 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) [The respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [The respondent is] 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.”
In this case, the Complainant’s uncontested evidence shows that the Respondent did not use or intend to use the disputed domain name in connection with a bona fide offering of goods or services. There is no evidence that the Respondent is commonly known by the disputed domain name. Moreover, the Respondent was not authorized by the Complainant to use the disputed domain name. In addition, the Complainant’s uncontested evidence shows the Respondent’s use of the disputed domain name for commercial gain by creating a likelihood of confusion with the Complainant's trademark.
On the basis of the evidence before it, the Panel concludes that the Complainant has made a prima facie case that the Respondent does not have any rights or legitimate interests in the disputed domain name and that none of the circumstances set out in paragraph 4(c) of the Policy apply. The Respondent has not rebutted the Complainant’s contentions. Accordingly, the Complainant meets the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that [the respondent] registered or […] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant [the owner of the trademark or service mark] or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [circumstances indicating that the respondent] 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) [circumstances indicating that the respondent] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) [circumstances indicating that the respondent is using the domain name to] intentionally attempt to attract, for commercial gain, Internet users to its 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 respondents’] website or location or of a product or service on its website or location.”
On the basis of the evidence before it, and in particular the fact that the Respondent attempted to use the disputed domain name to attract third party users for commercial gain by creating a likelihood of confusion with the Complainant's trademark, the Panel finds that the Respondent has engaged in bad faith registration and use within the meaning of paragraph 4(b)(iv) of the Policy. In turn, on the basis of this finding, the Panel concludes that the disputed domain name has been registered and is being used in bad faith.
The above suffices for the purposes of the Panel’s decision and therefore it does not need to consider any allegations of criminal activity made by the Complainant.
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, <mercadolibreltda.com>, be transferred to the Complainant.
Date: May 18, 2021
1 Given the absence of a Response, the Panel has carefully reviewed the record to ensure that the Center discharged its obligation to “employ reasonably available means calculated to achieve actual notice to the Respondent” in accordance with paragraph 2(a) of the Rules. To provide notice to the Respondent, the Center sent notification of the Complaint to the Respondent via email and (DHL) courier. The Center’s records reflect that delivery of the email notice was completed on April 6, 2021, and that Written Notice was successfully delivered via courier on April 12, 2021. Given the successful transmission of the notification of Complaint via email and courier, it appears likely that the Respondent received actual notice of the Complaint. Regardless, even if the Respondent did not receive actual notice, the Panel finds that the Center has discharged its obligation under paragraph 2(a) of the Rules. In this respect, see Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415 and Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647.