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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Ex Hacienda Los Camichines, S.A. de C.V. and Agavera Camichines, S.A. de C.V. v. Alberto C Mendoza

Case No. D2005-1049

 

1. The Parties

The Complainants are Ex Hacienda Los Camichines, S.A. de C.V. and Agavera Camichines, S.A. de C.V., of Jalisco, Mexico, represented by Abelman Frayne & Schwab, United States of America (hereinafter, the “Complainants”).

The Respondent is Alberto C. Mendoza, of Bradbury, United States of America (hereinafter, the “Respondent”).

 

2. The Domain Name and Registrar

The disputed domain name is <grancentenario.com> (hereinafter, the “Domain Name”) and it was registered with Register.com, Inc. (hereinafter, “Register.com”).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 4, 2005. On October 5, 2005, the Center transmitted by email to Register.com a request for registrar verification in connection with the Domain Name. On October 6, 2005, Register.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the Domain Name and providing the contact details for the administrative, billing and technical contact.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (hereinafter, the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter, the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter, the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 12, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was November 1, 2005. The Response was filed with the Center on October 31, 2005.

The Center appointed Mr. Albert Agustinoy Guilayn as the Sole Panelist in this matter (hereinafter, the “Panel”) on November 10, 2005. 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

As indicated above, the Complainants are Agavera Camichines, S.A. de C.V. and Ex Hacienda Los Camichines, S.A. de C.V. Both are companies incorporated and existing under the laws of Mexico and own several trademark registrations for the name GRAN CENTENARIO in the United States (in the case of Agavera Camichines, S.A. de C.V.) and in other countries (in the case of Ex Hacienda Los Camichines, S.A. de C.V.). This joint ownership of the above-mentioned trademarks has led to the Complainants filing the Complaint together.

The Complainants belong to the group of companies owned by Tequila Cuervo, S.A. de C.V., the world’s leading distiller and distributor of tequila. They have distributed the brand of premium tequila GRAN CENTENARIO since at least 1996, having extensively advertised it by different means in the territory of the United States. In this respect, the Complaint contains in its annexes documentation of the said advertising showing that the GRAN CENTENARIO trademark has been widely advertised in the United States of America since 1996 and has even been the subject of articles in various international publications such as the New York Times, the Wall Street Journal, the Los Angeles Times, the International Herald Tribune and the Daily Telegraph.

The Complainants own a large number of trademark registrations relating to the names GRAN CENTENARIO and CENTENARIO. In particular, Ex Hacienda los Camichines, S.A. de C.V. is the owner of trademark registrations for GRAN CENTENARIO in Mexico, Argentina, Australia, Bahamas, Benelux, Bolivia, British Virgin Islands, Bulgaria, China, Taiwan, Denmark, Estonia, Finland, France, Germany, Hungary, Iceland, Italy, Japan, Republic of Korea, Norway, Peru, Portugal, Romania, Russia, Slovak Republic, Spain and Sweden. All these trademark registrations were filed before the Domain Name was registered. Additionally, Agavera Camachines, S.A. de C.V. currently owns the US trademark registration No. 74642792 relating to the name GRAN CENTENARIO. This registration was originally filed on March 6, 1995, by Tequila Cuervo La Rojena, S.A. de C.V., but was later transferred to Agavera Camachines, S.A. de C.V.

The Complainants are also the owners of numerous domain names containing the brands GRAN CENTENARIO and CENTENARIO including, inter alia, the following:

- <grancentenario.net>;

- <grancentenario.org>;

- <gran-centenario.com>;

- <gran-centenario.net>;

- <gran-centenario.org;

- <grancentenario-tequila.com>;

- <gran-centenariotequila.com>;

- <gran-centenario-tequila.com>;

- <centenario.com>;

- <centenario.biz>; and

- <centenario.us>

The Respondent is an individual who currently resides in California, United States of America.

The Domain Name was registered on November 13, 1999, and has been inactive since.

On May 29, 2003, the Complainants sent a letter to the Respondent informing him of the Complainants’ trademark rights in the GRAN CENTENARIO and CENTENARIO trademarks and urging the Respondent to transfer the Domain Name.

 

5. Parties’ Contentions

A. The Complainants

The Complainants contend in their Complaint that:

- They hold trademark registrations for the names GRAN CENTENARIO and CENTENARIO in a large number of countries. In particular, they hold a US trademark for the name GRAN CENTENARIO which has been extensively advertised in that country since 1996, and has become well-known.

- The Domain Name is identical to their GRAN CENTENARIO trademarks. The only differences between the said trademarks and the Domain Name is that the Domain Name does not contain a space between the two words found in the trademarks and includes the suffix “.com”. In this respect, they consider that such differences are irrelevant for the purposes of the Complaint.

- The Respondent has no rights or legitimate interests in respect of the Domain Name. In this regard, the Complainants state that the Respondent is not known by the name GRAN CENTENARIO and has not been licensed, authorized, contracted or otherwise permitted by the Complainants in any way to use their GRAN CENTENARIO trademarks. Additionally, the Domain Name is currently not associated with any operative website and has never been.

- The Complainants’ letter of May 29, 2003, was returned to the Complainants as the Respondent’s address, which had been obtained from the Whois database, was incorrect. The Complainants kept on trying to contact the Respondent by telephone and e-mail and, after an exchange of e-mails, the Respondent offered the Domain Name for sale at a price of $600,000.

- The Respondent registered and uses the Domain Name in bad faith, as evidenced by the following facts. In the first place, after being contacted by the Complainants’ representatives in order to negotiate a purchase of the Domain Name, the Respondent asked for a price of $600,000, an amount that clearly indicates his speculative intentions vis-а-vis the Domain Name. In the second place, the Respondent owns a number of domain names that correspond to well-known trademarks belonging to Mexican banks (<bancodemexico.info>, <bancodemexico.biz> and <bancomer.biz>), chinaware manufacturers (<fabricasdefrancia.biz>) and newspapers (<elimparcial.info>). In addition, when registering the Domain Name, the Respondent used false contact information. Finally, the Complainants indicate that, due to the numerous advertising campaigns made in the United States of America of the GRAN CENTENARIO trademark, the Respondent was clearly aware of the fact that he was registering a domain name that corresponds to a well-known trademark in which he had no rights at all.

B. The Respondent

The Respondent contends in his Response that:

- Apart from the Domain Name, he owns other domain names (such as <albertomendoza.com>) based on the names of his family members as well as on some common names in Spanish, as he has always wanted to be part of the Internet community.

- In particular, the Respondent registered the Domain Name because it is a combination of words that is commonly used in the Spanish language to describe the 100th anniversary of an event as well as “the coin centenario”. Taking into account these facts, the Respondent registered the Domain Name as it could be used for any type of business.

- After his family had been annoyed several times by telephone calls from the Complainants’ representatives, the Respondent decided to request a price of $600,000 for the transfer of the Domain Name in order to dissuade the Complainants from continuing to contact him in order to transfer the Domain Name. This is the reason why he asked for such an elevated price and, as a matter of fact, the Respondent never expected the Complainants to pay it.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainants must prove to the Panel that the following three circumstances are present in this case in order to obtain the transfer of the Domain Name:

(A) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and

(B) that the Respondent does not hold rights or legitimate interests in respect of the Domain Name; and

(C) that the Domain Name has been registered and is being used by the Respondent in bad faith.

A. Identical or Confusingly Similar

The first element required by the Policy is that the Domain Name and the GRAN CENTENARIO trademarks are identical or confusingly similar.

In the present case, the only differences between them are: (i) the lack of a space between the two words “gran” and “centenario” in the Domain Name; and (ii) the inclusion of the “.com” suffix in the Domain Name.

The indicated differences are directly derived from the current technical structure of the Domain Names System (DNS) and, consequently, they should not be considered as relevant differences between the Domain Name and the Complainants’ GRAN CENTENARIO trademarks. Many decisions adopted under the Policy have taken this approach (see, for example, New York Life Insurance Company v. Arunesh C. Puthiyoth, WIPO Case No. D2000-0812 or A & F Trademark, Inc., Abercrombie & Fitch Store, Inc., Abercrombie & Fitch Trading Co., Inc. v. Party Night, Inc., WIPO Case No. D2003-0172).

Therefore, the Panel considers that the Domain Name is identical to the Complainants’ GRAN CENTENARIO trademarks and, consequently, that the Complainants have met the first requirement foreseen by the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires that the Respondent does not have rights or legitimate interests in the disputed domain names. In this regard, paragraph 4(c) of the Policy foresees a set of circumstances in which the Respondent may be considered as having said rights or interests. Those circumstances are:

- Where the Respondent has used the Domain Name or has made demonstrable preparations for its use in connection with a bona fide offering of goods and services before any notice of the dispute; or

- Where the Respondent has been commonly known by the Domain Name, even when no trademark or service mark right has been acquired; or

- Where the Respondent has made a legitimate non-commercial 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 the present case, none of the above-mentioned circumstances apply. It appears that the Respondent has not been commonly known by the name “Gran Centenario” and he has not developed a “legitimate non-commercial” activity through the Domain Name. Further, the Respondent has certainly not been authorized by the Complainants to register the Domain Name or to use the trademarks in any way.

Moreover, the Respondent has not provided this Panel with convincing explanations about the business opportunities he foresees in connection with the use of the Domain Name, and he has not indicated credible reasons that could lead this Panel to believe that the Respondent has a right or legitimate interest in the Domain Name.

Therefore, the Panel considers that the Respondent does not have rights or legitimate interests in the Domain Name and that the second condition set out by the Policy has been met by the Complainants.

C. Registered and Used in Bad Faith

The last of the elements foreseen by paragraph 4(a) of the Policy is that the Respondent must have registered and be using the Domain Name in bad faith.

In this regard, it is important to be reminded that the Domain Name must have been both registered and used in bad faith, as stated in many decisions adopted under the Policy (World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001 or Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001, for example).

As it has been previously stated, the Respondent is neither linked to nor associated with the Complainants’ trademarks GRAN CENTENARIO. The Respondent has not provided any convincing arguments that the Domain Name has been registered and used in good faith.

In this respect, it is important to be reminded that the Domain Name has been inactive for more than five years. This lack of activity may fall within the concept of use in bad faith foreseen by paragraph 4(b) of the Policy. Numerous decisions adopted under the Policy confirm this approach (see, for example, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003), indicating that when the lack of use of a domain name by a respondent is complemented with a number of other factors that indicate that the respondent has acted in bad faith, then bad faith – as foreseen by the Policy - may be found.

Such a pattern of conduct seems to exist in this case if, apart from the above-mentioned elements, the following factors are taken into account:

- The Respondent is the owner of multiple domain names relating to trademarks owned by different Mexican entities without any apparent authorization.

- The Respondent lives in a country where the Complainants’ trademarks have been actively promoted and advertised for years. Thus, it seems unlikely that the Respondent was not aware of the Complainants’ trademark rights when he registered the Domain Name. This impression is reinforced by the fact that the Domain Name has not been used since it was registered and that the Respondent is the holder of other domain names that correspond to trademarks owned by Mexican entities.

- When requested to transfer the Domain Name, the Respondent established a price that absolutely surpassed any reasonable consideration for such a transfer. In this respect, the arguments filed by the Respondent in order to justify such a price seem weak from this Panel’s perspective.

- The Respondent partially included inaccurate contact information in the Whois database.

This Panel wants to emphasize that these assumptions relating to the Respondent’s pattern of conduct have not been convincingly refuted by the Respondent in his Response. These factors are not conclusive if they are individually considered, but if they are jointly considered they seem to reflect a certain pattern of conduct indicating that the Respondent registered and has been using the Domain Name in bad faith.

Consequently, the Panel finds that it has been proved that the Respondent registered and has used the Domain Name in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <grancentenario.com> be transferred to Agavera Camichines, S.A. de C.V.


Albert Agustinoy Guilayn
Sole Panelist

Dated: November 21, 2005

 

Источник информации: https://internet-law.ru/intlaw/udrp/2005/d2005-1049.html

 

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