Bachoco, S.A. de C.V. v. Network and IT Management Ltd.
Case No. D2009-1687
1. The Parties
The Complainant is Bachoco, S.A. de C.V., of Celaya, Guanajuato, Mexico, represented by Bashman, Ringe y Correa, S.C. Mexico.
The Respondent is Network and IT Management Ltd., Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom, representing itself.
2. The Domain Name and Registrar
The disputed domain name <bachoco.com> is registered with Signature Domains, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2009. On December 10, 2009, the Center transmitted by email to Signature Domains, LLC a request for registrar verification in connection with the disputed domain name. On December 10, 2009, Signature Domains, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on December 19, 2009. The Center verified that the Complaint together with the amended to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 21, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was
January 10, 2010. The Respondent requested an extension, which the Center granted on January 8, 2010. The Response was filed with the Center on January 13, 2010.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on
January 26, 2010. 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
Complainant is the owner of registrations for the word and design trademark and service mark BACHOCO on the register of the Mexican Institute for Industrial Property (Instituto Mexicano de la Propiedad Industrial (IMPI)), including registration number 374080, effective date October 20, 1989, in international classes (ICs) 4 and 6, covering food and its ingredients; registration number 374079, effective date October 19, 1989, in ICs 4 and 6; registration number 389989, effective date February 20, 1990, in ICs 2 and 9, and a number of subsequent registrations for BACHOCO as a word and design trademark and service mark (including registration numbers 820335, 822338 and 879309). Complainant is the owner of a number of BACHOCO-formative trademarks and service marks on the register of IMPI.
Complainant has registered the word trademark BACHOCO on the Principal Register of the United States Patent and Trademark Office (USPTO), including registration number 2,742,553, dated July 29, 2003, in IC 29, covering frozen and breaded meats (claiming date of first use and first use in commerce of February 6, 2003). The aforesaid December 14, 1999 application was filed with the USPTO as an intent to use (ITU) application, published for opposition on August 1, 2000, with statement of use filed on April 24, 2003.1 Complainant is the owner of additional word, word and design, and BACHOCO-formative trademarks on the Principal Register of the USPTO, including registration numbers 3,393,570; 3,329,376; 3,680,529, and; 3502785.
Complainant has submitted evidence to substantiate all of the aforesaid trademarks registrations.
Complainant is a major producer, distributor, marketer and exporter of poultry products, and other food products, based in Mexico. Complainant indicates that it initiated use of the BACHOCO trademark in Mexico in 1984, and has provided evidence of registrations as above for the aforesaid trademark. Complainant reports its sales in Mexican pesos, and for 2008 the company had net sales in the amount of MXP $20,125.3 million. Complainant indicates that it has made capital investments exceeding USD $51 million in Mexico and in the Southeastern region of the United States in order to promote its products under the BACHOCO trademark. Complainant is a publicly-traded company listed on the Mexican Stock Exchange since 1991 and the New York Stock Exchange since 1997 (trading on the NYSE under ticker symbol IBA). Complainant has submitted audited financial reports and other evidence to substantiate the aforesaid data.
Complainant operates a commercial Internet website at the address (URL) http://www.bachoco.com.mx/ and http://www.bachoco.mx/.
According to the Registrar's verification, Respondent is registrant of the disputed domain name. According to an Internic WhoIs report submitted by Complainant, the record of registration for the disputed domain name was created on March 24, 2002.
Respondent uses the disputed domain name to direct Internet users to a domain name parking service operated by Sedo.com. In Respondent's terms, that parking service “displays pay-per-click advertising links and sponsored search results for hosted domain names”. According to Respondent, the link farm currently displays no links that reference Complainant or its products. Respondent states that “Sedo.com's automated technology generates links provided by their system and Google using algorithms which are based in part upon the contextual meaning of the terms and words contained in the domain name, which in this case is “bachoco” and upon visitor search history. … Respondent has used Sedo.com to host the web page for the Disputed Domain since April 2009.”
Respondent states that prior to April 2009, it employed the services of DomainSponsor to host the disputed domain name with a parking service similar to that of Sedo.com. Respondent indicates that the search results submitted by Complainant for March 5, 2009, to the extent they showed links to Complainant and Complainant's products, may have been the result of the different search algorithms used by the prior host, and that Respondent was not aware that such specific references to Complainant were returned. Respondent also indicates that the references to Complainant may have resulted from the fact that the parking page was accessed from a location in Mexico, and that search results from different locations may have returned different results.
Complainant has submitted a notarized printout of webpages addressed by the disputed domain name dated March 5, 2009 showing numerous links to poultry and poultry related products, including links specifically referencing Complainant (e.g., Bachoco Pollos) and to third-party vendors (e.g., Pollos en el Sitio). The link farm printout also shows various links to products and services unrelated to Complainant (e.g. Bolsa de Empleo, Casas de Venta).
Complainant indicates that Respondent's parking page through Sedo.com has offered the disputed domain name for sale. Complainant provided a printout of a webpage addressed by the disputed domain name showing a link to “Buy Domains”. Respondent indicates that it has not offered the disputed domain name for sale through the Sedo.com Buy Domains link.
Respondent provides evidence that the term “Bachoco” is used to identify a mountain in Mexico, as the identifier of six towns in Mexico, and a popular beach area in Mexico (“Playa Bachoco”). Respondent provides several links to references by mountain bikers to their expeditions to the Bachoco mountain area in Mexico. Respondent also provides evidence that there are some individuals in the Philippines and other locations with the surname Bachoco.
Respondent indicates that it acquired the disputed domain name because of its connection to a geographic location, and that it has previously registered several other domain names that incorporate geographically descriptive terms, including “burlingtonvermont.net”, “coppercanyon.net”, “torontocanada.net” and “turnov.net”. Respondent has registered several common descriptive terms, such as “nectarines.net” and “radishes.net”.
The Registration Agreement in effect between Respondent and Signature Domains, LLC subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use. (Policy, paragraph 4(a)).
5. Parties' Contentions
A. Complainant
Complainant alleges rights in the trademark and service mark BACHOCO as evidenced by registration in Mexico and the United States, and as acquired through use in commerce in Mexico, the United States and elsewhere.
Complainant argues that based on its market-leading position in Mexico that its BACHOCO mark is well known in connection with the sale of poultry and poultry-related products, and that its mark is also well known in the United States based, inter alia, on its listing on the New York Stock Exchange.
Complainant considers that the disputed domain name is identical or confusingly similar to its trademark and service mark.
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name because there is no business relationship between Complainant and Respondent, and because Respondent's sole use of the disputed domain name has been in connection with a link farm parking page. Complainant indicates that this is neither a bona fide offering of goods or services prior to notice of a dispute, nor a legitimate noncommercial or fair use of the disputed domain name.
Complainant alleges that Respondent registered and has used the disputed domain name in bad faith. Complainant argues that Respondent has used its well-known mark to divert Internet users to Respondent's link farm webpage for commercial gain. Complainant alleges that Respondent knew of its well known mark when it registered the disputed domain name, seeking to take advantage of Complainant's goodwill in its mark. Complainant further alleges that Respondent's offer to sell the disputed domain name evidences bad faith registration and use.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
B. Respondent
Respondent argues that because Complainant's mark is also a geographically descriptive term that the mark is a weak one.
Respondent asserts that use of the disputed domain name in connection with a sponsored link pay-per-click website is a legitimate commercial use of the disputed domain name. Respondent alleges that the links appearing on the website are generated by an algorithm employed by the parking page host, and that Respondent does not control the content appearing on the webpage. Respondent states that it had no knowledge of Complainant's mark when it registered the disputed domain name, and that it was unaware that the parking page had included references to Complainant's mark when the parking page was operated by its previous host. Respondent indicates that in any case, the references to Complainant and its mark likely appeared only in searches originating in Mexico in the Spanish language. Respondent indicates that its parking page does not currently return results referring to Complainant or its mark.
Respondent indicates that because Complainant's mark consists of or incorporates a geographically descriptive term, and a term that is also used as a surname in some countries, that Respondent's use of the disputed domain name constitutes fair use of that descriptive term. Respondent further states that its registration of other descriptive terms confirms its practice of fairly using such terms in domain names.
Respondent states that it could not have acted in bad faith when it registered the disputed domain name because the registration of Complainant's mark at the USPTO was effective subsequent to Respondent's registration of the disputed domain name, and therefore Respondent could not have been attempting to take unfair advantage of Complainant's mark. Respondent indicates that because it is based outside of Mexico, it would not have known of Complainant's mark even if it was registered and well known in Mexico. Respondent indicates that Complainant's trademark registrations at the USPTO assert a first use after March 24, 2002, which is the date of registration of the disputed domain name.
Respondent asserts that it is not using the disputed domain name in bad faith because, even if the search results occasionally refer to Complainant and its mark, those results are generated by a software algorithm that is not controlled by Respondent.
Respondent argues that Complainant is barred by laches from pursuing its claim.
Respondent requests the Panel to reject Complainant's request to direct the registrar to transfer the disputed domain name.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
Respondent received documents in a timely manner from the Center, and filed a detailed Response. Respondent had adequate notice of the proceedings and a reasonable opportunity to respond.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) respondent's domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondent's domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has provided evidence of registration of its BACHOCO trademark and service mark in Mexico and the United States, and substantial evidence of use in commerce in both jurisdictions (see Factual Background supra). Complainant has established rights in the BACHOCO trademark and service mark.
The disputed domain name, <bachoco.com>, is identical to Complainant's trademark and service mark within the meaning of the Policy.
Complainant has established that it has rights in a trademark and service mark, and that the disputed domain name is identical to that trademark and service mark.
Complainant has provided substantial evidence that it is a leading producer and distributor of poultry and poultry-related products in Mexico, and substantial evidence of long-standing and widespread usage in commerce of its trademark and service mark in Mexico, as well as significant expenditures relating to promotion of its mark. Complainant has established that its BACHOCO mark is well known among the relevant public in Mexico.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.” (Policy, paragraph 4(c))
It is common ground that Respondent's sole use of the disputed domain name has been to direct Internet users to link farm parking pages from which Respondent earns revenues based on click-throughs to advertisers by Internet users. Respondent has not argued that it was commonly known by the disputed domain name, or that it acquired trademark or service mark rights in the term “Bachoco”.
Respondent argues that the operation of a link farm parking page in the circumstances of this proceeding is a fair commercial use of the disputed domain name which presumably may constitute a bona fide offering of services prior to notice of the dispute or, as more explicitly argued by Respondent, a fair commercial use of Complainant's mark in the disputed domain name. The factors that Respondent argues legitimize its use of the disputed domain name are: (1) the term “Bachoco” is used as a geographic identifier of a mountain and certain municipalities in Mexico; (2) the term “Bachoco” is used as a surname in some places; (3) any links or references to Complainant and/or competitors of Complainant appearing on its link farm parking page are generated by an algorithm employed by its website host (and if its prior website host's algorithm generated references to Complainant, its present website host's algorithm does not appear to be doing that, at least at the present time), and (4) it did not know of Complainant or its mark when it registered the disputed domain name, inter alia, because Complainant had not yet succeeded in registering its mark in the United States, and in any case asserted a date of first use in the United States prior to the date of registration of the disputed domain name.
At the time the disputed domain name was registered by Respondent, the term BACHOCO was well known by the public in Mexico in association with Complainant and its products, and the mark had been registered by the Mexican trademark office (IMPI). The term was not considered a generic or commonly descriptive term by IMPI. Respondent has not used the disputed domain name to identify a geographic location, such as might a business located in proximity to the subject Mexican mountain region. It has instead used the term to operate a pay-per-click link farm, the webpage content for which depends on the working of an algorithm developed by the link farm host. Respondent points to a few blog postings by mountain bike aficionados that reference the BACHOCO mountain region, but these few scattered postings are dwarfed by references to Complainant and its mark returned by the leading search engines when the term is entered.2 In these circumstances, Respondent cannot reasonably be construed to be making use of the disputed domain name as a geographical identifier.
The Policy specifically accounts for registrations by persons with surnames identical or confusingly similar to trademarks by providing that rights or legitimate interests may be established when a registrant has been commonly known (including as an individual) by the disputed domain name. But the fact that a trademark may also be a surname does not operate as wholesale authorization for third parties to make use of that trademark in a domain name. Surnames typically do not provide their holders with rights to initiate businesses using identical well-known trademarks. This is well settled as a matter of trademark jurisprudence (see SBC Communications Inc. v. Fred Bell aka Bell Internet,
WIPO Case No. D2001-0602).
The fact that an algorithm generates links to a trademark owner and/or its competitors does not legitimate otherwise abusive conduct (see Park Place Entertainment Corporation v. Anything.com Ltd.,
WIPO Case No. D2002-0530). Respondent's link farm parking page has been demonstrated by Complainant to have returned numerous results referring to Complainant as well as to third-party providers of poultry and poultry related products. The fact that Respondent has changed parking page hosts, and that the new host may be employing a different algorithm, does not retroactively legitimate prior use of the disputed domain name to direct Internet users to a website that provides links to third-party providers of similar products, or to other goods and services. Complainant's mark is being used by Respondent to generate advertising and revenue for third parties, including Respondent.
Complainant filed an intent to use application with the USPTO in 1999. Upon registration of the mark, Complainant's presumption of rights to its exclusive use in the United States relate back to the filing date (see further discussion infra). If Respondent had conducted a search of the USPTO database prior to its registration of the disputed domain name in 2002 it would have found Complainant's intent to use application, and notice of publication of the pending mark. Respondent has not persuaded the panel that it did not know of Complainant's mark because it was not yet registered in the United States (even though it was already well known in Mexico), particularly in view of the fact that Complainant was listed on the New York Stock Exchange in 1997.
Respondent's use of the disputed domain name in connection with a pay-per-click link farm does not establish rights or legitimate interests in the disputed domain name. Complainant has succeeded in demonstrating that Respondent lack rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These include “(i) circumstances indicating that [the respondent] ha[s] registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly related to the domain name”; and “(iv) by using the domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the 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 your web site or location”.
Respondent has argued that it could not have registered the disputed domain name in bad faith because (a) at the time Respondent registered the disputed domain name (the record of registration was created March 24, 2002) Complainant had not succeeded in registering its trademark and service mark in the United States, and Complainant also also claimed a date of first use (February 6, 2003) in its earliest application subsequent to Respondent's registration, and (b) because Respondent is not targeting its link farm parking page to Internet users in Mexico, Respondent cannot be charged with knowing of Complainant's earlier trademark registration and usage in Mexico (with registration as early as October 19, 1989).
This Panel has on a substantial number of occasions observed that a respondent cannot generally be found to have acted in bad faith when it registers a domain name prior to the acquisition by complainant of rights in a trademark. See, e.g., Dow Jones & Company, Inc. v. Idea Studios LLC dba Envent,
WIPO Case No. D2009-1033, where this Panel noted:
A finding that Respondent registered and used the disputed domain name in bad faith presupposes that Complainant had service mark rights that could be unfairly exploited at the time of domain name registration. See, e.g., Super-Krete International, Inc. v. Concrete Solutions, Inc.,
WIPO Case No. D2008-1333; Foundation Source Philanthropic Services, Inc. v. Arlene B Gibson/Foundations That Make a Difference/Domain Discreet,WIPO Case No. D2007-0875; Symbility Solutions, Inc. v. Darren Ritchie / Symbility,
WIPO Case No. D2007-0471; John Ode d/ba ODE and ODE - Optimum Digital Enterprises v. Intership Limited,WIPO Case No. D2001-0074.
Respondent, does not, however benefit from this general rule. First, Respondent is based in the Cayman Islands. It asserts that it adopted the term “Bachoco” in its domain name because of a geographic location in Mexico. Respondent might well have expected that persons searching for that term would be located in Mexico, where Complainant conducts its business. There is no persuasive reason why Respondent should not be equally held to knowledge of existing well-known and registered trademarks in Mexico as it is to knowledge of trademarks in the United States. Without doubt when Respondent registered the disputed domain name Complainant owned trademark rights in Mexico, and Respondent's registration of the disputed domain name postdated the acquisition by Complainant of rights in its mark.
Even if this inquiry were limited to the United States (which it is not), an intent to use application establishes a presumption of trademark rights in favor of the applicant dating back to the date of filing of the application contingent on registration of the trademark. Filing of the application is treated as constructive use of the mark. See 15 U.S.C. §§1051(b)-(d) & 1057(c). Complainant filed an ITU application with the USPTO on December 14, 1999, well before Respondent registered the disputed domain name, and was subsequently granted registration with respect to the subject trademark. While Complainant's application asserted a date of first use in 2003, that assertion does not affect its rights based on constructive use of the mark based on its trademark application.3 Respondent has not demonstrated that Complainant lacked rights in the BACHOCO mark in Mexico or the United States prior to its registration of the disputed domain name.
Respondent has used Complainant's well-known trademark and service mark for purposes of commercial gain to direct Internet users to its pay-per-click link farm website where it has promoted the goods and services of third parties in Complainant's line of business, and where it has promoted the goods and services of third parties in unrelated businesses, by creating Internet user confusion as to Complainant acting as source, sponsor, affiliate or endorser of Respondent's commercial website.
There is insufficient evidence on the record of this proceeding to establish whether Respondent offered to sell the disputed domain name for a price in excess of its out of pocket expenses. The Panel does not find that Respondent registered the disputed domain name with bad faith intent to sell it to Complainant or a third-party.
The Panel finds that Respondent registered and has used the disputed domain name in bad faith within the meaning of the Policy.
The Panel rejects Respondent's argument that Complainant should not succeed because it delayed in initiating this proceeding. The initiation of disputes under the Policy is not barred by a doctrine of laches. See Tom Cruise v. Network Operations Center / Alberta Hot Rods,
WIPO Case No. D2006-0560.
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, <bachoco.com>, be transferred to the Complainant.
Frederick M. Abbott Sole Panelist
Dated: February 9, 2009
1 Panel search of USPTO TARR database for trademark prosecution history undertaken February 8, 2009.
2 Searches using "Bachoco" in the Bing and Google engines undertaken by the Panel on February 8, 2009.
3 Statements by applicants for registration of marks at the USPTO regarding date of first use do not establish evidentiary presumptions. See 3 McCarthy on Trademarks and Unfair Competition § 20:28 (4th ed.).
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