19th Jul 2004
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Consejo de Promoción Turística de México, S.A. de C.V. v. Latin America Telecom Inc.
Case No. D2004-0242
1. The Parties
The Complainant is Consejo de Promoción Turística de México, S.A. de C.V., Colonia Anzures, Mexico, represented by Bello, Guzmán, Morales Y Tsuru, S.C., Mexico.
The Respondent is Latin America Telecom Inc., Pittsburgh, PA Pennsylvania, United States of America, represented by ESQwire.com Law Firm, United States of America.
2. The Domain Name and Registrar
The disputed domain name <mexico.com> is registered with Register.com.
3. Procedural History
The Complaint was filed in the Spanish language with the WIPO Arbitration and Mediation Center (the “Center”) on March 30, 2004. On April 6, 2004, the Center transmitted by email to Register.com a request for registrar verification in connection with the disputed domain name. On April 6, 2004, Register.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant; providing the contact details for the administrative, billing, and technical contact and stating that the language used at the time of registration was English. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint and the proceedings commenced on April 6, 2004. In response to objections from the Respondent regarding the language of the proceedings, the Center asked the Complainant to translate the Complaint into English. An English language Complaint was filed with the Center on April 30, 2004, and the Center extended the due date for the Response to May 20, 2004. The Response was filed in the English language with the Center on May 21, 2004.
The Center appointed Alan L. Limbury, Manuel Moreno-Torres and David E. Sorkin as panelists in this matter on June 21, 2004. The Panel finds that it was properly constituted. Each member of 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.
Language of the proceeding
The Panel has considered Complainant’s submission that that this proceeding should be conducted in Spanish, based on its own character as a majority Government-owned company incorporated and domiciled in Mexico; upon connections between Respondent and Mexico; upon familiarity on the part of the CEO of Respondent, Mr. Rami Schwartz, with the Spanish language; upon considerations of expense and delay and upon a concern that the translation of its evidence into English might inequitably disadvantage Complainant.
Pursuant to the Rules, paragraph 11(a), the language of the administrative proceeding shall be the language of the registration agreement unless otherwise agreed by the parties, specified in the registration agreement or determined by the Panel. The parties have not made any such agreement. The registrar is a New York company, the language of the registration agreement is English and no other language is specified in that agreement. Respondent is a United States company incorporated in Delaware and having an address in Mexico. Mr. Schwartz does appear to be fluent in Spanish. Respondent is represented by an American attorney and the Response is in English.
The Complainant has complied with the Center’s request to translate the Complaint into (well expressed) English. Some of the Exhibits remain in Spanish. Although there has already been delay in the proceeding and additional cost incurred by Complainant in translating the Complaint, there would be additional delay and cost incurred if Respondent were now required to translate its Response into Spanish. In all the circumstances the Panel is not disposed to determine that the language of the proceeding should be other than English.
Accordingly the language of the proceeding is English.
Extension of time for decision
On July 6, 2004, in accordance with the Rules paragraph 10(c), the date by which the Panel is required to forward its decision to the Center was extended to July 19, 2004. On July 19, 2004, the date was further extended by the Panel to July 24, 2004. In the event the further extension was not needed.
4. Factual Background (chronological)
The disputed domain name <mexico.com> was registered on November 14, 1997. The registrant was recorded as “Latin America Telecom Inc. Rami Schwartz”. Mr. Schwartz is the CEO of Latin America Telecom Inc. and principal contact for domain name purposes. The Panel will refer to the registrant collectively as Respondent.
The website to which the disputed domain resolves contains information relating to Mexico and has a portion comprising advertisements for tourism services, such as hotels, transportation, restaurants and entertainment.
Complainant, the Mexico Tourism Board, commenced operations in October 1999. It is an incorporated company, majority owned by the Government of Mexico. Its main function is to plan and coordinate, in conjunction with the Tourism Ministry of Mexico, the policy and strategy for promoting, both nationally and internationally, the tourism of Mexico. Many of its activities had been conducted over the previous three decades by its predecessor, the Tourism Ministry. Complainant is authorized by the Ministry of Foreign Affairs to operate offices in many major cities of the world, including five in the United States of America.
On March 26, 2001, Complainant’s representative submitted to the United States Patent and Trademark Office (about the Respondent’s website) that:
“The website for MEXICO.COM is a general information site about Mexico, and includes information such as employment in Mexico, classified advertisements, horoscopes, current news events, financial and stock quotes, and product information and sale of a variety of items including books, cd’s, computers, electronics and groceries.”
On June 19, 2001, Complainant became non-exclusive licensee from the Ministry of Tourism of Mexican registered trademark 604142, “MEXICO and design”, registered in class 35 on March 29, 1999, upon application made on November 19, 1998. The licence provides that Complainant is entitled to exercise legal actions to protect the trademark as if it were the holder. The dominant feature of this mark is the capitalized word MEXICO.
In late 2002 or early 2003, there was a meeting between the parties, as to which there is conflicting evidence before the Panel. It is convenient to set out here the parties’ respective versions of what occurred, so that the meeting may be appreciated in its chronological setting.
Complainant relies on a notarized statement under oath by Mr. Gabriel Moctezuma Muñoz, Complainant’s Assistant Managing Director and Legal Representative.
Mr. Muñoz says that at the end of 2002 (without recalling the exact date), he attended a meeting with Mr. Rami Schwartz and others at Complainant’s offices, at which “the only subject discussed… was the sale offer made by… Mr. Schwartz regarding the domain name <mexico.com> to [Complainant] stating that he was the owner thereof and stating that its price was [US $1.2 million], subject to negotiation and the prior agreement of his partners.”
Respondent relies on sworn affidavits of Mr. Schwartz and Mr. Fernando Roldán.
Mr. Roldán, who is currently employed by Astra Zeneca Laboratories in Mexico, says he acted as a consultant to Mexico.com in 2000, when he recommended to Mr. Schwartz that he use the advertising agency FCB Mexico. Mr. Schwartz followed this advice and his account executive there was Ms. Maria Elena Mancha, who became CEO of Complainant in January 2001, and remained so until about June 2003.
Mr. Roldán says he was a consultant to Complainant from September 2002, until March 2003. He noticed that Complainant’s websites “www.mexico-travel.com”, “www.visitmexico.com” and “www.visitamexico.com” had no user traffic and were doing a poor job promoting Mexican tourism on the Internet. In late 2002/early 2003, he recommended to Ms. Mancha that she consider a meeting with Mr. Schwartz to see if it was possible for Complainant to acquire mexico.com to use to promote Mexican tourism. Ms. Mancha advised Mr. Roldán to invite Mr. Schwartz to a meeting to discuss this possibility. The meeting took place in January 2003. Ms. Mancha had to cancel at the last minute but sent four representatives in her place, including Mr. Muñoz.
Mr. Roldán says that at the meeting, Mr. Muñoz asked if Mr. Schwartz would be willing to sell the domain name <mexico.com>. Mr. Schwartz replied that absolutely not, that Mexico.com was not simply a domain name but an entire web site business. Mr. Schwartz further advised that he did not have the authority to consider any sales proposal without unanimous board approval and that although there was no interest in selling Mexico.com in any circumstances whatsoever, he could not enter into any discussions related to any offers to purchase Mexico.com without a non-disclosure agreement (NDA). Notwithstanding, it was agreed Mr. Schwartz would draft an NDA and send it to Complainant.
Mr. Roldán says Mr. Muñoz asked Mr. Schwartz if he had any idea of the value of Mexico.com. Mr. Schwartz said it was difficult to put any price to Mexico.com, nor to its intellectual property rights. However, with the purpose of providing them with some courtesy, he provided Mr. Muñoz with a list of other high-profile domain names that had sold in the recent past, such as <korea.com>,<business.com>, <wallstreet.com> and <chicago.com>. Mr. Roldán did not recall whether Mr. Schwartz discussed a particular price for Mexico.com.
Mr. Schwartz’ sworn evidence accords with that of Mr. Roldán. He says he never received a signed NDA and there were no further discussions regarding the sale of Mexico.com.
On April 24, 2003, on similar terms to the licence previously mentioned, Complainant became non-exclusive licensee from the Ministry of Tourism of Mexican registered trademark 698252, “MEXICO and design”, registered in class 35 on May 8, 2001, upon application made on March 29, 2001. The mark comprises the capitalized word MEXICO with a castellated design superimposed in a band across the lower part of each letter. This mark is prominently displayed outside Complainant’s offices and has been frequently used on its stationery in conjunction with part of Complainant’s name, as follows:
CONSEJO DE PROMOCIÓN TURISTICA
Either alone or as part of a slogan, the mark has also been displayed in advertisements promoting tourism in Mexico, as in: “Discover the many moods of MEXICO”.
In July 2003, Complainant sought assistance from the Mexican Government’s Federal Executive Legal Consultancy in searching for trademarks owned by any other Government agency that could be used to support a claim for the disputed domain name. By letter dated August 28, 2003, the Legal Consultancy wrote to the Assistant Secretary, Legal and Human Rights Affairs, Secretariat of the Interior, referring to Complainant as having requested support “to analyze the likelihood to claim the domain name <www.mexico.com> and seeking, among other things, copies of trademark registration certificates and applications made by the Mexican Government “regarding marks made up solely of the word ‘MEXICO’ or of such word and other denominations or figures… Any registration obtained before 1997, would be considerably valuable”. The letter also sought proof “that the name ‘MEXICO’ has been used as a trademark, i.e., as a distinguishing sign of products and services in the trade”.
On March 5, 2004, on similar terms to the licences previously mentioned, Complainant became non-exclusive licensee from the Ministry of Tourism of the following Mexican registered trademarks:
EN EL CORAZON DE MEXICO [In the Heart of Mexico], No. 793376, registered in class 35 on May 28, 2003, upon application made on October 29, 2002, with a claimed first use on June 16, 1999;
TIANGUIS TURISTICO MEXICO (word mark) [Mexican Tourism Fair], No. 543888, registered in class 42 on February 28, 1997, upon application made on February 17, 1997, with a claimed first use on May 5, 1993;
TIANGUIS TURISTICO MEXICO (AND DESIGN), Nos. 544179 (class 39), 544180 (class 35), 544181 (class 25), 544182 (class 14), 544682 (class 16), 545584 (class 56), 555025 (class 25), 555026 (class 18), 556600 (class 42) and 561185 (class 8), registered on various dates between March 20, 1997, and October 27, 1997, upon applications filed on February 17, 1997, with a claimed first use on May 5, 1993. The mark comprises a design featuring two stylized human figures leaning towards each other with an apparent load on their backs and occupying about three quarters of the space, beneath which appear the words TIANGUIS TURISTICO, with the word MEXICO beneath them, in type about twice as large as those words.
On March 17, 2004, Complainant became registered as assignee from Banco Nacional De Comercio Exterior S.N.C, of Mexico, of Mexican registered trademark 478857 in respect of “International Commercial Fairs” in Class 42. This mark was registered on November 8, 1994, upon application made on August 23, 1993. The registration has been renewed for a term of ten years from August 23, 2003. The mark is a design in the form of a stylized square standing on one point, above the horizontal capitalized word MEXICO, beneath which is a row of downward pointing triangles, each about one third the height of the letters of the word above. The row is coextensive with the length of the word above.
The terms under which that mark was assigned to Complainant are recorded in a separate agreement between the bank and Complainant, which recites: “ That on February 19, 2004, they entered into a right assignment agreement regarding the trademark No. 478857, “WITH NO DENOMINATION” Class 42, with effective date August 23, 1993, and file date November 8, 1994, owing to the fact that [Complainant] is willing to own such mark in order to strengthen its position in the lawsuit to be filed against the person currently holding the domain site www.mexico.com”. Complainant undertook to transfer ownership of that mark to the assignor upon the final resolution of that lawsuit.
As mentioned, the Complaint was filed on March 30, 2004.
5. Parties’ Contentions
The trademark MEXICO has been used since at least 1973, and has been intensely publicized both within and outside Mexico in multimillion dollar campaigns.
The disputed domain name is identical or confusingly similar to trademark registrations 478857, 604142 and 698252 and is likely to cause confusion regarding the mark TIANGUIS TURISTICO MEXICO.
Respondent has no rights or legitimate interests with respect to the disputed domain name. It is not commonly known by the disputed domain name. It is not authorized by Complainant or any other entity of the Government, such as the Ministry of Tourism, to use the trademark MEXICO or any variants thereof.
Respondent has an established practice of registering numerous domain names which incorporate in their entirety highly distinctive, famous and well-known trademarks, such as <guerradelasgalaxias.com> (Star Wars); <elchavo.com> and <chavodelocho.com> (El Chavo being a popular Mexican TV character); <piolin.com> (the cartoon character Tweety); <agustinlara.com> (a world renowned Mexican composer); <supersonicos.com> (The Jetsons); <losprotagonistas.com> (a famous radio/TV sports show); <alcoholicosanonimos.com> (Alcoholics Anonymous); <mundoejecutivo.com> (a well known magazine in Mexico) and <chapulincolorado.com> (one of the most important heroes in Mexican television).
Respondent must have registered these domain names expecting to obtain important amounts of money for their transfer to their legitimate owners. Respondent must be taken to be in the business of selling domain names that incorporate trademarks to the owners of those marks.
In the case at hand, given the widespread use of the trademark MEXICO in connection with tourism goods and services, and the intensity with which this trademark has been publicized both inside and outside Mexican territory by multi-million dollar campaigns, Respondent must have selected the disputed domain name with the expectation of obtaining a significant amount of money in exchange for transferring this domain name to the rightful holder of the trademark reflected therein.
Respondent’s use of the disputed domain name has been blatantly in bad faith, since for more than two years Mr. Rami Schwartz has been repeatedly attempting to sell it to Complainant for $US1.2 million. This cannot be use in connection with a bona fide offering of goods or services.
Respondent’s domains are blocked and banned in several Spam Lists. The disputed domain name is listed on Rhyollite.com’s Unwelcome Domain Name site and Mr. Schwartz appears to have been sued for spam-related matters. In such circumstances any claimed hosting or e-mail services cannot constitute a bona fide offering of goods or services.
The website to which the disputed domain resolves has no disclaimer of any association with Complainant and may confuse and divert consumers seeking the information and services covered by Complainant’s trademark MEXICO. They would be misled into believing that the tourism services advertised are those selected and monitored for quality by Complainant or those associated with the trademark MEXICO in Complainant’s publicity campaigns.
The disputed domain name was registered and is being used in bad faith. Respondent has registered hundreds of domain names including at least a dozen which incorporate, in their entirety, widely-known, famous or notorious trademarks. One such trademark is the trademark MEXICO, used by Complainant or its predecessor for more than 30 years. Mr. Schwartz has his residence in Mexico and both he and Respondent have been exposed to the publicity enjoyed by the trademark MEXICO in that country and in the United States. Respondent therefore knew or should have known of the existence of the mark. This is corroborated by the fact that Mr. Schwartz identified and targeted Complainant as licensee and principal user of the mark and offered to sell the disputed domain name to Complainant.
The amount sought (US $1.2 million) demonstrates bad faith registration and use.
Respondent acquired the disputed domain name, as it did with other domain names, with intent to contact the trademark owner and offer the domain name for sale for a large amount of money. That is Respondent’s business.
Respondent registered the disputed domain name to prevent Complainant from reflecting the trademark MEXICO in a corresponding domain name, because Respondent knew of Complainant’s mark MEXICO. Respondent has engaged in a pattern of registering approximately a dozen famous or well-known trademarks as domain names.
Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s highly publicized trademark MEXICO as to the source, sponsorship, affiliation or endorsement of Complainant [sic].
Complainant does not have rights to a trademark identical or confusingly similar to <mexico.com>. After the registration date of the disputed domain name, all the marks on which Complainant relies were either licensed non-exclusively to it or, in the case of No. 478857, “loaned” to it for the purposes of this proceeding. None are truly owned by Complainant.
Marks 604142, 698252 and 793376 were all registered after the disputed domain name was registered. There is no evidence Complainant has used the design mark 478857, which it borrowed from the Banco Nacional. Only that mark and the ‘Tianguis Turistico Mexico and design’ marks were registered prior to the domain name registration. The borrowed mark should be disregarded since Complainant does not truly have rights to this mark. The ‘Tianguis Turistico Mexico and design’ marks are mere phrases incorporating Mexico, so they provide no trademark rights to the word Mexico.
The letter dated August 28, 2003, from the Legal Consultancy to the Secretariat of the Interior proves that Complainant did not itself believe it had trademark rights to the term MEXICO because it had to ask the Federal Government for assistance to find trademarks; the Government itself was unsure whether it had trademark rights in that word since it had to request from its agencies evidence of trademark use; and both Complainant and the Government understood a trademark was needed that was made up “solely of the word MEXICO” and was “obtained before 1997” to support this action.
The conclusion should be drawn that Complainant has had no trademark rights for the word MEXICO at any time and that Complainant knew it before filing the Complaint.
Complainant apparently alleges common law rights based on its use of the mark “Mexico” in prominent and visible places. Complainant’s use of MEXICO is in a mere descriptive sense, i.e. for the promotion of tourism to Mexico. Complainant has not and cannot establish the necessary secondary meaning, i.e. that consumers associate the word “MEXICO” only with Complainant, because numerous third parties use MEXICO in the same descriptive sense.
None of the marks on which Complainant relies are identical or confusingly similar to the disputed domain name. They are merely design marks, text with design or marks incorporating the word Mexico in descriptive phrases. Complainant needs to have a trademark for MEXICO standing alone to bring this proceeding: Puerto Rico Tourism Co. v. Virtual Countries, Inc., WIPO Case No. D2002-1129; Empresa Municipal Promoción Madrid S.A. v. Easylink Services Corporation, WIPO Case No. D2002-1110; Chambre de Commerce et d’Industrie de Rouen v. Marcel Stenzel, WIPO Case No. D2001-0348and Brisbane City Council v. Warren Bolton Consulting Pty Ltd., WIPO Case No. D2001-0047.
Respondent has a legitimate interest in the disputed domain name because it is using it in connection with a bona fide offering of services at its “www.mexico.com” website. Complainant’s own officials have previously acknowledged this. Complainant’s former director, Ms. Mancha, was previously the executive at Respondent’s advertising agency responsible for Respondent’s account under a $27,000 per month advertising contract. Complainant’s current Assistant Director, Mr. Muñoz, submitted an affidavit to the USPTO which described mexico.com as a site offering many services different from those offered by Complainant.
Respondent’s “www.mexico.com” website is a classic example of bona fide use under the Policy. See e.g. Pocatello Idaho Auditorium District v. CES Marketing Group Inc., NAF Case No. FA103186; Kur- und Verkehrsverein St. Moritz v. StMoritz.com, WIPO Case No. D2000-0617; Brisbane City Council v. Warren Bolton Consulting Pty Ltd., WIPO Case No. D2001-0047; Port of Helsinki v. Paragon International Projects Ltd., WIPO Case No. D2001-0002; City of Hamina v. Paragon International Projects Ltd., WIPO Case No. D2001-0001 and Newport News v. VCV Internet, eResolution Case No. AF0238.
Complainant tries to avoid this substantial body of precedent by misrepresenting the nature of Respondent’s website and attempting to mislead the Panel into believing that Respondent’s intent all along was simply to profit from a sale of the domain name. Complainant also argues that Respondent’s goods and services cannot be bona fide because Respondent has been banned on several spam lists. Complainant points to a person who sued Respondent for spam-related matters. In fact Respondent has never transmitted any spam. Because Respondent owns many domain names for its email service, it is particularly vulnerable to a problem known as spoofing whereby a spammer, desiring to hide its true identity, uses a forged return address at a domain name owned by an innocent third party, making it appear that the third party (in this case Respondent) transmitted the spam. Such was the case with the lawsuit against Respondent. Respondent requested a copy of the original email so it could be investigated, but this was never provided.
Respondent also has a legitimate interest under the Policy based on being known by the domain name. Respondent operates Mexico.com, Inc., and Mexico.com LLC, both wholly owned subsidiaries of Latin America Telecom. Respondent also owns registered trademarks in the U.S. and Mexico for Mexico.com.
The disputed domain name was not registered and is not being used in bad faith. Respondent’s legitimate operation of the “www.mexico.com” website since 1997, contradicts bad faith.
Contrary to its argument that <mexico.com> is likely to create confusion with its licensed and borrowed marks, Complainant told the USPTO something different in 2001, when it was seeking to prevent its application to register <visitmexico.com> from being suspended due to [Respondent’s] prior filed application to register <mexico.com>. There is no evidence of intent to cause confusion on the part of Respondent.
Complainant cannot prove that Respondent registered the disputed domain name with Complainant in mind. There is no evidence that Complainant possessed any trademark in November 1997, when the domain name was registered, and the earliest date that Complainant licensed any of the marks on which it relies is June 30, 2000 (mark 604142) almost three years later.
It is well established that a Complainant cannot meet its burden of proving bad faith registration of a domain name that is registered prior to the date of existence of Complainant’s trademark, because Respondent could not have had knowledge of the mark: Mytech Partners, Inc. v. Jebs Corp., NAF Case No. FA135645. In John Ode d/ba ODE and ODE – Optimum Digital Enterprises v. Intership Limited, WIPO Case No. D2001-0074, the Panel explained:
“There are ample authorities supporting the view that a trademark that did not exist at the time the disputed domain name was registered cannot serve as the basis for a claim under the ICANN Policy, since it is impossible for the domain name to have been registered in bad faith”.
Here Complainant itself knew, even as late as July 2003, six years after the registration of the disputed domain name, that it had no such trademark rights, since it sought from the Government of Mexico assistance in seeking such trademarks to bring this case. Respondent’s knowledge at the time of registration of the disputed domain name can hardly have been superior to that of Complainant. Respondent cannot be accused of registering a domain name with intent to profit from a trademark that Complainant did not possess, and knew that it did not possess, at the time the domain name was registered.
The alleged sale discussions do not establish bad faith registration or use. Even if the Panel accepts Complainant’s version of events, Respondent certainly would have been entitled to enter into negotiations to sell the disputed domain name upon Complainant’s invitation: Pocatello Idaho Auditorium District v. CES Marketing Group Inc., NAF Case No. FA103186. It would not constitute bad faith if, as Complainant alleges, Respondent registered the disputed domain name with intent to sell it, since the Policy requires registration with intent to sell it to “complainant who is the owner of the trademark”. Here Complainant did not own any trademark incorporating MEXICO when the domain name was registered.
Complainant has also pointed to other domain names Respondent has registered which Complainant alleges contain famous marks. Respondent has registered many domain names that contain Spanish words and others that are reflective of Mexican culture to potentially use to offer as email addresses for its email service, of which 100 are currently so used. There are 600,000 users signed up for email service at Mexico.com. Most of the domain names are common words and terms, registered to give users a choice of email addresses that reflect diverse categories of interests. Respondent has never offered to sell any of these domains as Complainant alleges.
Reverse domain name hijacking
The facts and precedent clearly demonstrate the absence of any validity to the Complaint under each element of the Policy. Complainant has misrepresented every element. Complainant borrowed a design trademark for Mexico in February of this year under an agreement that states the loan of the mark is solely to “strengthen its position” in this proceeding – a mark which it must return after the proceeding is completed. Complainant claims Respondent does not operate a genuine web site when Complainant’s former director had previously served as Respondent’s advertising account executive, and its current assistant director was well aware of the services offered at Mexico.com three years ago based on Complainant’s letter to the PTO. Complainant invited Mr. Schwartz to a meeting only to set him up for a trap intended to portray him as a cybersquatter, and it then misrepresented what occurred at the meeting. Notwithstanding the cost and effort Respondent has had to put in defending this baseless Complaint, Complainant has caused serious damage to Respondent’s reputation and the “www.mexico.com” web site. If the facts of this case do not constitute reverse domain name hijacking, it is hard to imagine what would.
6. Discussion and Findings
Paragraph 15(a) of the Rules requires the Panel to decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, these rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, a Complainant bears the burden of showing:
(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used by the Respondent in bad faith.
A. Rights in a trademark
The name Mexico is a geographical indication. While geographical indications are not protected as such under the Policy, they may nevertheless qualify for protection under the Policy as trademarks if registered as such or if shown by evidence of their use to have become distinctive of the goods or services of a particular trader. In this respect they may be protected as trademarks in the same way as descriptive (generic) words shown to have become distinctive: Brisbane City Council v. Warren Bolton Consulting Pty Ltd, WIPO Case No. D2001-0047; City of Hamina v. Paragon International Projects Ltd., WIPO Case No. D2001-0001; Port of Helsinki v. Paragon International Projects Ltd., WIPO Case No. D2001-0002; Wembley National Stadium v. Tim Gordon, WIPO Case No. D2000-1218; Skipton Building Society v. Peter Colman, WIPO Case No. D2000-1217; City of Salinas v. Brian Baughn, NAF Case FA104000097076; Empresa Municipal Promoción Madrid v. Planners Planners, WIPO Case No. D2002-1112; HER MAJESTY THE QUEEN, in right of her Government in New Zealand et. al. v. Virtual Countries, Inc, WIPO Case No. D2002-0754; Kur- und Verkehrsverein St. Moritz v. StMoritz.com, WIPO Case No. D2000-0617; Kur- und Verkehrsverein St. Moritz v. Domain Finance Ltd, WIPO Case No. D2004-0158 (June 14, 2004)and the discussion at paragraphs 276 –286 of the Interim Report of the Second WIPO Internet Domain Name Process of April 12, 2001.
Complainant has not established that at the time of registration of the disputed domain name in 1997, it had any rights in any of the marks upon which it relies. It did not commence operations until 1999. Nor has Complainant shown, either prior to the registration of the disputed domain name or prior to the filing of the Complaint, use of any mark having as its dominant feature the name Mexico in such a manner as to have acquired secondary meaning denoting a sole source of goods or services.
However, Complainant has established that when it filed the Complaint, it was the registered proprietor of Mexican trademark 478857, which it had acquired by assignment from Banco Nacional under the terms of the “loan” agreement. Complainant has also established that when it filed the Complaint, it was the non-exclusive licensee, with the right to exercise legal actions to protect the trademark as if it were the holder, of Mexican registered trademarks Nos. 604142, 698252, 793376, 543888, 544179, 544180, 544181, 544182, 544682, 545584, 555025, 555026, 556600 and 561185.
A licensee of a mark, even a non-exclusive licensee, has sufficient rights for the purposes of paragraph 4(a)(i) of the Policy: Grupo Televisa, S.A., Televisa, S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v. Party Night Inc., a/k/a Peter Carrington, WIPO Case No. D2003-0796;Telcel, C.A. v. jerm and Jhonattan Ramírez, WIPO Case No. D2002-0309; Ingram Micro Inc. v. RJ, Inc. and Rick Juarez, WIPO Case No. D2001-0948and Brown Thomas & Company Limited v. Domain Reservation, WIPO Case No. D2001-0592.
Panels have expressed divergent views on the important question whether the relevant time at which a complainant must show that it has rights in a trademark is the time of registration of the domain name or the time of the filing of the Complaint. See Abt Electronics, Inc. v. Motherboards.com, NAF Case No. FA0312000221239; Travant Solutions, Inc. v. Cole, NAF Case No. FA 203177; Phoenix Mortgage Corp. v. Toggas, WIPO Case No. D2001-0101; Razorbox, Inc. v. Skjodt, NAF Case NO. FA 150795; Iogen Corp. v. IOGEN, WIPO Case No. D2003-0544; Chiappetta v. Morales, WIPO Case No. D2002-1103; Ode v. Intership Ltd., WIPO Case No. D2001-0074; Digital Vision, Ltd. v. Advanced Chemill Sys., WIPO Case No. D2001-0827; Firstgate Internet A.G. v. Soung, WIPO Case No. D2000-1311; eGalaxy Multimedia Inc v. T1, NAF Case No. FA 101823; Roberta Chiappetta dba Discount Hydroponics v. C. J. Morales, WIPO Case No. D2002-1103.
The rationale for the divergent views was explained in Joe Cole v. Dave Skipper, WIPO Case No. D2003-0843, as follows:
“There are a large number of decisions in which a complaint that relied upon a trade mark that post-dated registration of the relevant domain name has failed. These include Mr. Severiano Ballesteros Sota, Fairway, S.A. and Amen Corner S.A. v. Patrick Waldron, WIPO Case No. D2001-0351. Where in the Policy is the rationale for this approach to be found? One possibility is that the words “at the time of registration” are to be implied at the end of paragraph 4(a)(i); i.e. to say that the relevant trade mark rights must exist at the time that the domain name is registered. Another approach is to accept that there is no such time restraint in paragraph 4(a)(i), but to say that the fact that a trade mark did not exist at the time of the domain name’s registration is a factor to be taken into account on the issue of bad faith. The latter approach is one that has been followed in a number of UDRP cases including, for example, the recent decision of MADRID 2012, S.A v Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598”.
Many of the cases favouring the former approach appear to proceed on the assumption that bad faith is impossible unless the mark preceded the domain name. This Panel prefers the view expressed by the learned panelist in ExecuJet Holdings Ltd. v. Air Alpha America, Inc., WIPO Case No. D2002-0669 (October 7, 2002):
“For the purposes of the Policy, a domain name registration can have been undertaken in bad faith even if the trade marks rights at which such bad faith was directed arose after the registration of the domain name. This might be the case where a registrant speculated on an impending merger between companies that would create a new name combining in whole or in part the names of the merger partners. Another example concerns the situation where a registrant based its registration of the domain name on its insider knowledge of the intentions of a (former) business partner or employer in relation to the latter’s development of a new trademark. From the intent of the Policy, it is clearly irrelevant whether a registrant intended to abuse an existing trademark right or one which that registrant specifically knew would arise”.
This Panel takes the view that if a Complainant has registered a trademark or otherwise established trademark rights prior to the filing of the Complaint, and the domain name is found to be identical or confusingly similar to the mark, then the relatively low threshold requirements of paragraph 4 (a)(i) of the Policy are met. The mark may be a geographical indication but if it is a registered or common law trademark, there are trademark rights for the purpose of paragraph 4 (a)(i) of the Policy.
Accordingly the Panel finds that Complainant has rights in the marks of which it was assignee or licensee at the time it filed the Complaint.
B. Identical or Confusingly Similar
Many cases have established that “essential” or “virtual” identity is sufficient for the purposes of the Policy: The Stanley Works and Stanley Logistics Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113, Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102; America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004; Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; Komatsu Ltd. and Komatsu America International Company v. RKWeb Ltd., WIPO Case No. D2000-0995; America Online, Inc. v. Andy Hind,WIPO Case No. D2001-0642 and The Toronto-Dominion Bank v. Boris Karpachev, WIPO Case No. D2000-1571.
The “borrowed” mark “MEXICO and square design”, No. 478857 and the marks “MEXICO and design”, Nos. 604142 and 698252 all have as their dominant feature the capitalized word MEXICO. The Panel finds the disputed domain name to be virtually identical to these marks. The Complainant has established this element of its case with respect to these marks.
As to the marks EN EL CORAZON DE MEXICO and the various word and design marks TIANGUIS TURISTICO MEXICO, the Panel finds that the word MEXICO is not their dominant feature and the disputed domain name is not identical to any of them. The similarity evaluation is made purely on a comparison between the trademark and the alphanumeric string which makes up the domain name: KeyCorp v. BruceBolton.com, WIPO Case No. D2004-0234, applying earlier cases. For the same reason, the Panel finds the disputed domain name is not confusingly similar to any of those marks. Complainant has not established this element of its case with respect to those marks.
C. Rights or Legitimate Interests
On the material before the Panel, the Panel finds that Respondent registered <mexico.com> based upon the sense of MEXICO as a geographic name, not upon any trademark sense. Respondent has used the disputed domain name to operate a web site providing a portal to access a global information network featuring topics relating to Mexico, as Complainant admitted to the USPTO in 2001. Accordingly, the Panel finds that Respondent is and since 1997, has been making a fair and bona fide use of the domain name and thus has a legitimate interest in it.
Complainant has failed to establish this element of its case.
D. Registered and Used in Bad Faith
Even assuming that the word MEXICO was being used as a trademark by Complainant’s predecessor, the Tourism Ministry of Mexico, it is inconceivable to the Panel that Respondent selected the domain name <mexico.com> because of any trademark sense of the word MEXICO, rather than because of its sense as the name of a country. That precludes a finding of bad faith registration. Furthermore, there is no indication that Respondent has used the disputed domain name in a manner related to its trademark sense rather than its geographic sense. Even if Respondent did offer it for sale to Complainant as alleged in the Complaint (five years after registration), the context of that offer makes clear that the value of the domain name derived from its geographic rather than its trademark sense.
Accordingly the Panel is not satisfied that the domain name was registered primarily for the purpose of selling, renting or otherwise transferring the registration to Complainant or to a competitor of Complainant; to prevent Complainant from reflecting a mark in a corresponding domain name nor primarily for the purpose of disrupting the business of a competitor.
Nor is the Panel satisfied that Respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s web site or location or of a product or service on its web site or location. In this regard, Complainant has not persuaded the Panel that Internet users, typing the word MEXICO into their browsers, expect to find the goods or services of Complainant, as distinct from goods, services or information about the country Mexico.
Nor is the Panel satisfied that there are any other circumstances evidencing bad faith registration or use on the part of Respondent.
Complainant has failed to establish this element of its case.
E. Reverse Domain Name Hijacking
The Complaint having failed, the Panel has regard to the Rules, paragraph 15(e):
“If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at reverse domain name hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its Decision that the Complaint was brought in bad faith and constitutes and abuse of the Administrative Proceeding.”
Reverse Domain Name Hijacking is defined in the Rules, paragraph 1 as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.” To prevail on such a claim, a respondent must show either that the complainant knew of the respondent’s unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith: Sydney Opera House Trust v. Trilynx Pty. Ltd., WIPO Case No. D2000-1224 and Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151 or that the Complaint was brought in knowing disregard of the likelihood that the respondent possessed legitimate interests: Smart Design LLC v. Hughes, WIPO Case No. D2000-0993; or that the complainant knew it had no rights in the trademark or service mark upon which it relied and nevertheless brought the Complaint in bad faith: Dan Zuckerman v. Vincent Peeris, WIPO Case No. DBIZ2002-00245; HER MAJESTY THE QUEEN, in right of her Government in New Zealand, as Trustee for the Citizens, Organisations and State of New Zealand, acting by and through the Honourable Jim Sutton, the Associate Minister of Foreign Affairs and Trade v. Virtual Countries, Inc., WIPO Case No. D2002-0754.
Here there are two grounds for a finding of Reverse Domain Name Hijacking. First, the Panel considers that Complainant’s submission in 2001 to the USPTO constitutes an acknowledgement both of Respondent’s legitimate interest in the disputed domain name and that the disputed domain name was not registered and is not being used in bad faith.
Second, by majority, with Mr. Moreno-Torres dissenting, the Panel finds that Complainant acted in bad faith by relying on a mark borrowed for the purpose of improving its position in these proceedings.
Accordingly the Panel finds this to be a case of Reverse Domain Name Hijacking.
For all the foregoing reasons, the Complaint is denied and the Panel declares that the Complaint was brought in bad faith and constitutes an abuse of the Administrative Proceeding.
Alan L. Limbury
David E. Sorkin
Dated: July 19, 2004