WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Administradora de Marcas, RD, S. de R.L. de C.V. and Radiomovil Dipsa, S.A. de C.V. v. Francisco Ito, El Mesero Express

Case No. D2008-1555

1. The Parties

The Complainant is Administradora de Marcas, RD, S. de R.L. de C.V., ZUG, Switzerland, and Radiomovil Dipsa, S.A. de C.V., Mexico City, Mexico, represented by the law firm of Basham, Ringe y Correa, S.C., Mexico.

The Respondent is Francisco Ito, El Mesero Express, Tijuana, Mexico.

2. The Domain Name and Registrar

The domain name under dispute is <neltelcel.com> (the “Domain Name”).

The Registrar of the disputed domain name is MyDomain, Inc. (fka NamesDirect) (hereinafter “NamesDirect” or the Registrar), United States of America.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, and on October 16, 2008, through e-mail and hardcopy, respectively, and later on November 11, 2008, as an amended complaint precising the name of the registrant of the disputed Domain Name. The Complaint was filed in accordance with the Uniform Domain Name Dispute Resolution Policy (the “Policy”) adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, the Rules for Uniform Domain Name Dispute Resolution Policy (the “ Rules”), and WIPO's Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). An “Acknowledgment of the Receipt of Complaint” was sent to Complainant by the Center on October 17, 2008.

On October 14, 2008, the Center transmitted by email to MyDomain, Inc. (fka NamesDirect) a “Request for Registrar Verification” in connection with the Domain Name at issue. The Registrar submitted a registrar's verification response, which confirmed that the Respondent is listed as the registrant; and confirmed the details for the billing, administrative and technical contacts.

On November 11, 2008, the Center verified that the Complaint satisfied the formal requirements of the Policy, the Rules, and the Supplemental Rules. It is worth mentioning that the Panel has independently determined and agrees with the Center's assessment that the Complaint is in formal compliance with the requirements of the Policy, the Rules, and the Supplemental Rules.

On November 11, 2008, the Center properly sent via e-mail and hardcopy (with enclosures) via courier to Respondent and to the technical, billing and administrative contact, a “Notification of Complaint and Commencement of Administrative Proceeding” enclosing copy of Complainant's Complaint. This Panel considers that the Complaint was properly notified to the registrant, the billing and technical contact, and the administrative contact as provided for in paragraph 2(a) and 4(a), of the Rules.

In accordance with the Rules, paragraph 5(a), the due date for Response was December 1, 2008. The Respondent did not submit any communication or Response. Accordingly, the Center notified the Respondent's default on December 4, 2008.

The Center appointed Pedro W. Buchanan Smith as the sole panelist in this matter on December 18, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information, statements or documents from the parties (taking note of Respondent's default in responding to the Complaint), nor the need as an exceptional matter, to hold any in-person hearings necessary for rendering this Decision, as provided for in paragraphs 12 and 13 of the Rules. Therefore, the Panel has decided to proceed under the customary expedited nature contemplated for this type of domain name dispute proceedings.

4. Factual Background

Radiomovil Dipsa, S.A. de C.V. is one of the largest distributors of communications services in Mexico and South America. In Mexico there are more than 50 million people using the communication services provided by TELCEL. The Complainant is also the owner of the domain names <telcel.com>, <telcel.com.mx> and <neltelcel.com.mx>.

According to Google analytics, and to the information provided by the Complainant it is possible to verify the significant number of persons that have accessed and used the web site “www.telcel.com” during January 1^st to August 31, 2008, in different countries, and particularly in Mexico. Information was also provided on those that have accessed the web page in the city of Tijuana, where the Respondent in located.

Administradora de Marcas, RD, S. de R.L. de C.V. is the owner of the following Mexican trademarks registrations:

(a) Federal Trademark TELCEL, registered in Mexico before the Mexican Industrial Property Institute under registration Number 391382 in full force and effect until August 28, 2015, on international class 38 for communications, with application date on August 28, 1990, and with Administradora de Marcas, RD, S. de R.L. de C.V., as the sole and exclusive listed owner;

(b) Federal Trademark TELCEL, registered in Mexico before the Mexican Industrial Property Institute under registration Number 401417 in full force and effect until August 11, 2009, on international class 37 for services rendered for the reparation and maintenance of all type of machinery and equipment (mechanical, electrical and electronical), with application date on August 11, 1989, and with Administradora de Marcas, RD, S. de R.L. de C.V., as the sole and exclusive listed owner;

(c) Federal Trademark TELCEL, registered in Mexico before the Mexican Industrial Property Institute under registration Number 479054 in full force and effect until June 23, 2014, on international class 37 for all services included in class 37 (constructions and reparations), with application date on June 23, 1994, and with Administradora de Marcas, RD, S. de R.L. de C.V., as the sole and exclusive listed owner;

(d) Federal Trademark TELCEL, registered in Mexico before the Mexican Industrial Property Institute under registration Number 479055 in full force and effect until June 23, 2014, on international class 38 for all services included in class 38 (communications), with application date on June 23, 1994, and with Administradora de Marcas, RD, S. de R.L. de C.V., as the sole and exclusive listed owner;

(e) Federal Trademark TELCEL, registered in Mexico before the Mexican Industrial Property Institute under registration Number 479056 in full force and effect until June 23, 2014, on international class 9 for all articles included in class 9, scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatuses and instruments; apparatuses for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs, with application date on June 23, 1994, and with Administradora de Marcas, RD, S. de R.L. de C.V., as the sole and exclusive listed owner;

(f) Federal Trademark TELCEL, registered in Mexico before the Mexican Industrial Property Institute under registration Number 884010 in full force and effect until March 18, 2015, on international class 38 for telecommunications, with application date on March 18, 2005, and with Administradora de Marcas, RD, S. de R.L. de C.V., as the sole and exclusive listed owner;

5. Parties' Contentions

A. Complainant

The TELCEL trademark is completely included in the <neltelcel.com> Domain Name, and therefore, the similarity among such trademark and the Domain Name on dispute is duly proved.

The Complainant has prior rights over the denomination TELCEL since August 11, 1989, as stated in the above mentioned Mexican Trademark Registration Certificate number 401417, and has been used for telecommunication services and cell phone apparatuses, which are directly related to the content of the web site “www.nelpastel.com”, which is automatically re-directed from “neltelcel.com”. The “www.neplastel.com” web site at the time of the filing of the Complaint contained information related with cell phones, and also negative and false information about products and services offered by TELCEL.

Radiomovil Dipsa, S.A. de C.V. is the registrant of the domain name <telcel.com>, where it can be appreciated the services and products that Radiomovil Dipsa, S.A. de C.V. offers bearing the trademark TELCEL.

The Complainant states that the Respondent has no rights or any legitimate interest in respect to the Domain Name subject to the Complaint, which furthermore has only been used with speculative purposes and in detrimental to the prestigious trademark TELCEL.

That Respondent is not commonly known by the Domain Name under dispute nor has any relation with or authorization with the Complainant for using their trademark. The Respondent has not prior rights or legitimate interest in the Domain Name, nor is commonly known by the Domain Name under dispute. In fact, the use of the same is only as a link to “www.nelpastel.com” which featured bad and false information about the products offered by the Complainant through its TELCEL trademark.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

The Panel considers that it is essential to dispute resolution proceedings that essential due process requirements be met.

Such requirements include that the parties and particularly the Respondent in this case be given adequate notice of proceedings initiated against them; that the parties may have a fair and reasonable opportunity to respond, exercise their rights and to present their respective cases; that the composition of the Panel be properly made and the parties be notified of the appointment of this Panel; and, that both parties be treated with equality in these administrative proceedings.

In the case subject matter of these proceedings, the Panel is satisfied that these proceedings have been carried out by complying with such elemental due diligence requirements, and particularly contemplating the notification of the filing of the Complaint and the initiation of these proceedings giving the Respondent a right to respond. The failure of the Respondent to submit a response is not due to any omission under these proceedings. There is sufficient and adequate evidence confirming the above.

Considering that the Respondent did not submit any communications and/or Response to the Complainant, this Panel as directed by paragraphs 14(a) and (b) and 15(a) of the Rules shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, and may draw such inferences there from as it may consider appropriate on the basis of Complainant's undisputed representations.

Paragraph 4(a) of the Policy directs that the Complainant must prove the presence of each of the following elements: (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 in bad faith.

A. Identical or Confusingly Similar

This Panel finds that Respondent's Domain Name is confusingly similar to Complainant's TELCEL trademarks. The TELCEL trademark is a well-known trademark and its term is completely included in the <neltelcel.com> Domain Name.

B. Rights or Legitimate Interests

The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Furthermore, the Respondent has not put forth any evidence of rights or legitimate interests in respect of the Domain Name.¹ There is nothing on the present record to establish that the Respondent has used or prepared to use the <neltelcel.com> domain name in connection with any bona fide offering of goods or services as contemplated under paragraph 4(c)(i) of the Policy; nor that the Respondent is commonly known by the Domain Name as contemplated under paragraph 4(c)(ii) of the Policy; nor that 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 as contemplated under paragraph 4(c)(iii) of the Policy.

C. Registered and Used in Bad Faith

The Panel also finds on the present record that Respondent has registered and used the Domain Name in bad faith, in particular but without limitation, pursuant to paragraph 4(b)(iii) of the Policy, in view that Respondent has registered the domain name primarily for the purpose of disrupting the business of Complainant. Whether or not the Respondent could be regarded as a literal competitor of Complainant, the Panel accepts that one effect of the Respondent's registration and use of the Domain Name may indeed be to direct Internet users away from the Complainant. See e.g. Vector Limited v. Vince and Jane Siemer, WIPO Case No. D2008-0925. There can be little doubt in the present case that the Respondent was aware of Complainant and its well known TELCEL mark at the time of registering the disputed domain name.² Moreover, Respondent had not asserted any right or legitimate interest in the Domain Name, whether based on freedom of speech, legitimate criticism, nor otherwise provided any supporting evidence to this effect. Even if there had been, this Panel would have been inclined to agree with the learned panel's reasoning in Vector Limited, supra, that:

“In a general sense the Respondent can say what he likes, limited only by his willingness to meet any consequences in damages, costs and penalties in another forum. He is at liberty to state his views on a website and may well be in a position to use the Complainant's name collaterally in fair, robust, or even harsh criticism, in the same way that a reviewer might reasonably criticise a named car, hotel, book, or airline.

However, such right, in the Panel's interpretation, stops short of giving the Respondent a right to name his website around the Complainant's trademark, in the knowledge of its trademark significance, and without permission, in circumstances in which the creation of confusion with the Complainant is apparently the primary intention. Perhaps more significantly in terms of the Policy, any such right in the Panel's view stops short of giving the Respondent a right to do so on an unauthorized basis through the domain name at issue here.”

The Panel in the present case finds this line of reasoning persuasive. In any event, the Domain Name does not currently appear to be in active use, it wholly incorporates Complainant's well known trademark, there has been no response, and the Panel finds it difficult to conceive of any active use of the Domain Name by the Respondent that would not in the circumstances conflict with the Complainant's trademark rights. See e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Accordingly, the Panel finds the third element of the Policy to be established.

7. Decision

Therefore, and in summary, this Panel finds:

(1) that the Domain Name registered by Respondent is confusingly similar to Complainant's trademark TELCEL;

(2) that Respondent has no rights or legitimate interests in respect of the <neltelcel.com> Domain Name; and

(3) that the <neltelcel.com> Domain Name has been registered and is being used in bad faith by the Respondent.

Therefore, for the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <neltelcel.com> be transferred to Radiomovil Dipsa, S.A. de C.V..

Pedro W. Buchanan Smith
Sole Member Panelist

Dated: January 1, 2009

¹ The Panel is aware that the term “nel” is sometimes used in Mexico as a slang form of “no”. The Panel has further noted that the Complaint includes some evidence that a website located at “www.nelpastel.com” contains comments that could be construed as critical of the Complainant. At the time of drafting this decision, the Domain Name does indeed to appear to re-direct to the URL “http://www.nelpastel.com/”, but no content appears thereon. In any event, the mere re-directing of the Domain Name to a different URL does not of itself suffice to establish a right or legitimate interest in this particular Domain Name. Nor, even if there had been some evidence in the record that the material previously appearing at “www.nelpastel.com” was genuine non-commercial criticism by the Respondent, there would still be a question as to whether a respondent's right to criticize a mark holder on the Internet necessarily extends to the use of a domain name which, without authorization, wholly incorporates and is clearly confusingly similar to the mark at issue. See e.g., Vector Limited v. Vince and Jane Siemer, WIPO Case No. D2008-0925.

² The Complainant is the largest the telecommunications provider in Mexico, and the Respondent is domiciled in Mexico.