The Complainant is Alestra, S. de R.L. de C.V., Mexico City, Mexico, represented by V&CO Patentes Y Marcas, S.C. (Vadillo & Co.), Mexico.
The Respondent is Richard Martin, Alexandria, Virginia, United States of America, represented by Venable, LLP, United States of America.
2. The Domain Name and Registrar
The disputed domain name <alestra.com> is registered with Network Solutions LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2006. On December 15, 2006, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On December 15, 2007, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant 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 (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 January 4, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 24, 2007. The Response due date was extended until January 31, 2007, the Response was filed with the Center on January 30, 2007.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on February 9, 2007. 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 Complainant has filed a Supplemental Submission dated February 14, 2007, which the Panel has considered. In a number of emails sent by the Respondent’s representative, the Respondent has “strenuously objected” to the supplemental filing. It is a matter for the Panel’s discretion whether or not to admit the Supplemental Submission. The Panel has decided not to do so. Its reasons for this are that the Supplemental Submission consists largely of argument. The Panel also considers that it is able to decide the Complaint on the basis of the original Complaint and Response.
The Respondent, too, has served a Reply to the Supplemental Submission dated February 21, 2007. Having decided not to admit the Complainant’s Supplemental Submission it follows that the Panel should not admit the Reply.
4. Factual Background
The Complainant is a Mexican company which offers telecommunications services including local and long distance phone calls and high speed Internet with the highest standards of quality and service. Its network infrastructure is based on the most advanced technology and offers daily transparent access to AT&T’s World Intelligent Network. This transmits more than 250 million data, voice and video messages in more than 218 countries and territories. It was apparently the first, among all providers of these kinds of services competing in the Mexican market, to obtain the ISO 9002 certification for all its processes.
The Complainant has a large number of trademarks which are referred to in the Complaint for the mark ALESTRA and for the mark ALESTRA plus device. These consist of registrations in Mexico and the United States in a number of classes. Some of the marks date back to 1995, others are more recent. The Complainant asserts that the marks are in force and have been used uninterruptedly since 1996 and applied to the services they protect.
By way of example, a core mark would appear to be the trademark ALESTRA registered in Mexico (No. 511657) in Class 9 for inter alia “telecommunications products”. This was registered on November 29, 1995.
Another core mark would appear to be the trademark ALESTRA registered in Mexico (No. 511656) in Class 38 for inter alia “telecommunication services”. This was registered on November 29,1995.
Set out at Annex 9 to the Complaint are copies of Mexican trademark certificates for the trademark ALESTRA including those referred to above.
The Complainant asserts that as a result of its “extensive telecommunications services … throughout the Mexican Republic” as well as for its “numerous and successful advertising campaigns in diverse communication media Alestra enjoys extensive recognition by the general public”. It also trades using the domain name <www.alestra.com.mx>. A printout of Alestra’s web page is set out at Annex 4 to the Complaint.
The Respondent has been engaged in business development and consulting services since at least as early as 1994 under the name “Alestra”. The Respondent incorporated his company as Alestra Technologies Corporation in 1996. Set out at Annex 1 to the Response is a declaration declared, apparently under United States of America law, which sets out details of the Respondent’s trading use of the name “Alestra”. Annexed to the declaration are copies of inter alia 1994 business correspondence in which the Alestra logo is used under the name “Alestra Technologies Corporation”. At Exhibit C is a copy of the Respondent’s consent to act as agent for Alestra Technologies Corporation as filed with the Washington DC Government on September 18, 1996, and acknowledged. At Exhibit E is exhibited a certificate of good standing from the Washington DC Government dated September 18, 1996.
At Exhibit F are copies of advertisements inserted under the name Alestra Technologies Corporation in the Washington Post and the Baltimore Sun dated September 22, 1996, and a copy of an invoice from the Baltimore Sun.
At Exhibit I is a copy of a consulting services agreement with Alestra Technologies Corporation on Alestra Technologies Corporation notepaper dated April 21, 2000.
5. Parties’ Contentions
A. Complainant
In summary the Complainant’s submissions are as follows:
1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant relies upon the evidence of its trademark registrations in Mexico for the trademark ALESTRA.
2. The Respondent has no rights or legitimate interests in respect of the domain name in dispute. The Complainant submits that it is “irrefutable” that from December 17, 1997, the Respondent has never used the domain name in a commercial way or used any demonstrable preparations to use his domain name. He is not “legitimized to employ the trademark ALESTRA in his domain name”.
3. The domain name was registered and is being used in bad faith. The Complainant submits that it is “obvious” that the Respondent knew of the existence of the trademark ALESTRA as a result of the Complainant carrying out “diverse advertising campaigns of massive impact”. The Respondent registered the domain name with the “merely purpose” of attracting Internet users to his site.
B. Respondent
1. The Respondent concedes that the domain name <alestra.com> is similar to the Complainant’s purported trademark ALESTRA but does not concede the Complainant has rights nor does he concede that any rights the Complainant has are superior to those of the Respondent. He points out that those rights which do not pre-date the Respondent’s registration of the domain name are irrelevant. He submits that it is unclear that the Complainant has any trademark rights that pre-date the Respondent’s common law use of ALESTRA.
2. Legitimate interests in respect of the domain name. The Respondent relies upon the evidence referred to above to show that he has been engaging in business development consulting services under the name Alestra as early as 1994.
3. Because the Respondent has legitimate and even “superior rights” in the name Alestra the Complaint must fail. There is no evidence that the Respondent registered his domain name to prevent the Complainant from using the name itself.
4. The Respondent seeks a finding of reverse domain name hijacking.
6. Discussion and Findings
General Principles under the Policy and the Rules
Under paragraph 4(a) of the Policy, the Complainant has the burden of proving:
(i) That the Domain Name 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 in bad faith.
The Panel proceeds to deal with each of these elements in turn.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has proved this part of the Complaint. The evidence given by the Complainant of its Mexican trademark rights show that the trademark ALESTRA was registered in Class 9 for “telecommunication products” and “telecommunications services” on November 29, 1995. Evidence is also given of later registrations for the trademark ALESTRA most of which have a registration date in 2006.
The Complainant submits that it has registrations in the United States as well as in Mexico. However, evidence is only given in relation to the Mexican registered trademarks.
The Panel is satisfied that the Complainant has trademark rights in the trademark ALESTRA dating back to November 29, 1995.
The Respondent concedes that the domain name <alestra.com> is similar to the Complainant’s trademark ALESTRA but does not concede that the Complainant has rights that are superior to the Respondent.
Strictly it is unnecessary for the Panel to consider which rights are superior in deciding the first element. It is only necessary to decide whether the domain name is “identical or confusingly similar to a trademark or a service mark in which the Complainant has rights”. Taking into account the Respondent’s concession it therefore finds that the domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.
There is a dispute between the parties as to whether the Complainant’s trademark rights pre-date the Respondent’s claimed common law use of “Alestra”, a business name which it states was first used “at least as early as 1994”. This is because the earliest of the Complainant’s Mexican registrations is dated November 29, 1995. This issue is relevant in deciding the second element, i.e. whether the Respondent has rights or legitimate interests in respect of the domain name.
B. Rights or Legitimate Interests
The Respondent submits that the Complainant’s case fails on this issue because the evidence which the Respondent adduces shows that it had legitimate rights and interests to use the trading name “Alestra” since as early as 1994 and that the Respondent’s rights pre-date the Complainant’s alleged rights.
The Panel has considered the Respondent’s evidence of use of the trademark ALESTRA and its history of using the name “Alestra” as part of its trading/business name. Having reviewed that evidence (which is summarised above) the Panel is satisfied that the Respondent has used the trademark ALESTRA since as early as 1994. Moreover it is clear from Mr. Martin’s declaration (Annex 1 to the Complaint) that he has used the email address “[email protected]” since he registered the domain name in 1996. This is shown by, for example, Exhibit N to his declaration which is a copy of a “Consultant Agreement” dated June 1, 1997. The domain name appears at the bottom of the notepaper.
The Respondent also relies upon the fact that the Complainant has provided no evidence to show the reputation or fame of its trademark ALESTRA in the Washington DC area. It submits that the fact that a foreign company filed a trademark application before even commencing use in the United States is in no way sufficient to show that the Respondent had actual knowledge of the Complainant in Mexico when it registered the domain name in dispute.
The Complainant argues that the Respondent lacks a legitimate interest because, since the date of registration of the domain name in dispute (December 17, 1997), he has never used it is a commercial way. The Respondent, it is submitted by the Complainant, has not shown any demonstrable preparations to use his domain name in connection with a bona fide offering of goods or services. Moreover, it submits that “it is convenient to stand out Alestra has no business or any other kind of relationship with the Respondent, and seeing that no transmission, licence or authorisation has been given to him, it is clear he is not legitimized to employ trademark Alestra in his domain name”.
The Panel takes into account the fact that the Complainant has the burden of proof in showing that the Respondent has no legitimate right or interest to use the domain name.
The difficulty from the Complainant’s point of view is that the Respondent’s evidence shows a long pattern of using the name mark “Alestra” since 1994 (which also pre-dates the first of the Complainant’s trademark registrations) and that the Respondent has apparently continued to trade using “Alestra” since 1994. Although the disputed domain name is apparently under construction and not in active use, the Respondent’s explanation for its registration is plausible in the circumstances, and there is also no evidence that the Respondent was aware of the Complainant’s trademark rights. The Respondent trades in Washington DC. The Complainant trades in Mexico and has Mexican trademark registrations. Indeed, in his declaration the Respondent states:
“24. At the time, 1994, that I adopted the name Alestra for my business name, I had never heard of the Complainant and don’t even know if they existed.
25. The first time I ever learnt that the Complainant disputed my rights to my domain name was in December 2005 when I received an email from Network Solutions.
26. At the time I registered my domain name <alestra.com>, I had never heard of the Complainant and I had been using the business name Alestra for several years.”
In the Panel’s view and taking into account the Respondent’s evidence of long use of the mark ALESTRA the Complainant has not succeded here in establishing that the Respondent has no rights or legitimate interests in respect of the domain name. It follows that the Complainant fails in proving this element. Accordingly the Complainant fails in its Complaint. It is therefore unnecessary for the Panel to consider the issue of bad faith. It is however necessary in the light of the claim by the Respondent for a finding of reverse domain name hijacking to consider that issue.
C. Reverse Domain Name Hijacking
In support of its submissions the Respondent relies upon the following:
(a) It is highly suspicious it has taken nine years after the Respondent registered the domain name in dispute for the Complainant to make the Complaint.
(b) There is no evidence to establish any bad faith on the part of the Respondent.
(c) The Complainant must have developed some business interest seeking a transfer of the domain name.
In the Panel’s view the Complainant has prima facie strong trademark rights, although limited to Mexico and also (although there is no evidence adduced) to the United States. These trademark rights go back to 1995, before the date of the registration of the domain name in dispute (December 17, 1997). What was not apparent to the Complainant at the commencement of the Complaint was the evidence of use of the mark “Alestra” by the Respondent pre-dating the Complainant’s trademark rights. Nevertheless in all the circumstances the Panel considers that there is no evidence that the Complainant was motivated in bad faith in bringing the Complaint. The Panel does not find on the evidence anything suspicious in the fact that the Complaint has only recently been brought. It is not prepared to make a finding of reverse domain name hijacking as requested by the Respondent
7. Decision
For all the foregoing reasons, the Complaint is denied.
Clive Duncan Thorne Sole Panelist
February 22, 2007
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