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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Lexicon Marketing Operating Luxembourg, S.A.R.L v. Ingles Total, S.A. de C.V.

Case No. D2006-0200

 

1. The Parties

The Complainant is Lexicon Marketing Operating Luxembourg, Los Angeles, California, United States of America, represented by Sheppard, Mullin, Richter & Hampton, United States of America.

The Respondent is Ingles Total, S.A. de C.V., Pensacola, Florida, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <inglessinbarreras.info> is registered with NameSecure.com (a VeriSign Company).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2006. On February 15, 2006, the Center transmitted by email to NameSecure.com (a VeriSign Company) a request for registrar verification in connection with the domain name at issue. On February 16, 2006, NameSecure.com (a VeriSign Company) 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 February 17, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March 9, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 10, 2006.

The Center appointed Andrew Mansfield as the sole panelist in this matter on March 20, 2006. 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 owns United States Federal Trademark Registrations Nos. 1,627,082, 1,657,270, and 2,205,186 for the mark “INGLES SIN BARRERAS.” Complainant first used the mark in commerce at least as early as May 13, 1988. Complainant’s three Trademark Registrations were issued in connection with printed material, audio-visual material, and educational services related to English language instruction. Complainant registered the domain name <inglessinbarreras.com> on March 24, 1997.

 

5. Parties’ Contentions

A. Complainant

Complainant alleges that it has expended significant sums in promoting and maintaining its website at <inglessinbarreras.com>. Complainant also alleges that it has promoted its services through other channels of communication. As a result, its English as a second language (“ESL”) course is the most successful home-study course of its type. Complainant also alleges that independent studies have shown that its brand is recognized by 95% of Hispanic households in the United States of America.

Complainant alleges that Respondent registered the domain name <inglessinbarreras.info> on November 16, 2004, and commenced selling ESL materials on and through the disputed domain name.

Complainant alleges that the domain name <inglessinbarreras.info> is identical or confusingly similar to Complainant’s trademark “INGLES SIN BARRERAS.” Complainant alleges that the suffix “.info” should be disregarded for purposes of this comparison.

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. On information and belief, Complainant alleges that Respondent has never been known by the name “INGLES SIN BARRERAS.” Further, Complainant alleges that Respondent is not licensed or authorized to sell products under Complainant’s trademark. Finally, while acknowledging that Respondent purports to sell used copies of Complainant’s materials, Complainant states that the copies are illegal digital reproductions of its materials.

Complainant also alleges that the disputed domain name was registered and is being used in bad faith. Complainant states that Respondent undertook the registration of the domain name and used it to sell ESL materials to intentionally attract, for commercial gain, Internet users to Respondent's website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, or affiliation of Respondent’s products and services.

B. Respondent

The Respondent, even though properly notified of the proceedings, did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

In order to succeed in its Complaint the Complainant has the burden of proof in showing that each element within paragraph 4(a) of the Policy is present. These are as follows:

(i) the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name was registered and is being used by the Respondent in bad faith.

The Panel proceeds to deal with each of these elements in turn.

A. Identical or Confusingly Similar

The domain name and Complainant’s trademark are identical but for the top-level domain name (“.info”). It is well-established that the top-level domain name should be disregarded for the purpose of comparing the domain name and a trademark. See, e.g., The Forward Association, Inc., v. Enterprises Unlimited, NAF Claim No. FA0008000095491 (“[N]either the beginning of the URL (http://www.), nor the TLD (.com) have any source indicating significance. Those designations are merely devices that every Internet site provider must use as part of its address”); See also United States Patent and Trademark Office’s Trademark Manual of Examination Procedures (3d ed.) § 1215.02 (“neither the beginning of the URL (‘http://www.’) nor the TLD have any source-indicating significance”).

The Panel finds, therefore, that the domain name and Complainant’s trademark “INGLES SIN BARRERAS” are identical.

B. Rights or Legitimate Interests

According to the Complaint, Respondent uses the domain name to sell unauthorized digital copies of INGLES SIN BARRERAS materials by creating a false impression of affiliation between itself and Complainant. Complainant further alleges that it has never released its materials in the format offered by Respondent. This has not been contested by Respondent as the latter has not responded to the Complaint. Based on the case file, it therefore appears that the activity at the web page linked to the disputed domain name could not possibly be categorized as legitimate reselling, even if that were asserted by the Respondent. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 and Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095.

The Complainant has made out an initial prima facie case that the Respondent lacks rights or legitimate interests in the domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the domain name. By matter of default, Respondent has failed to do so, and Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides the following non-exclusive examples of registration and use in bad faith:

“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, internet users to your website 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 your website or location or of a product or service on your website or location.”

Respondent’s actions evidence bad faith pursuant to Paragraph 4(b)(iv). The Panel finds that Respondent is using the domain name to intentionally attract customers to its website under the misrepresentation that its website is licensed, sanctioned, operated by, or affiliated with Complainant. There is substantial and undeniable likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website.

Further, a strong indication that Respondent is distributing unauthorized digital reproductions of Complainant’s materials in violation of United States copyright law provides additional support to Complainant’s assertion that Respondent is using the domain name in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <inglessinbarreras.info> be transferred to the Complainant.

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Andrew Mansfield
Sole Panelist

Dated: April 2, 2006