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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Instituto del Fondo Nacional de la Vivienda para los Trabajadores v. Descubridores Duo

Case No. DCC2007-0002

 

1. The Parties

The Complainant is Instituto del Fondo Nacional de la Vivienda para los Trabajadores, Mexico City, Mexico, represented by Josй Juan Mendez.

The Complainant has named two Respondents: Descubridores Duo, San Nicolбs de la Garza, Nuevo Leуn, Mйxico; and Domains by Proxy, Inc., Scottsdale, Arizona, United States of America. Domains by Proxy, Inc. is simply a privacy domain name registration service. As per the Registrar’s verification sent to the Center on June 23, 2007, the Registrar has confirmed that the registered owner of the domain name is Descubridores Duo, San Nicolбs de la Garza, Nuevo Leуn, Mйxico. Accordingly the Panel will treat Descubridores Duo as the sole Respondent.

 

2. The Domain Name and Registrar

The disputed domain name <infonavit.cc> is registered with Go Daddy Software, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2007. On June 22, 2007, the Center transmitted by email to Go Daddy Software, Inc., a request for registrar verification in connection with the domain name at issue. On June 23, 2007, Go Daddy Software, Inc., transmitted by email to the Center its verification response stating that Respondent Descrubidores Duo is listed as the registrant and providing the contact details. In addition, the Registrar stated that Respondent Domains by Proxy, Inc., is not listed as the registrant. In response to a notice by the Center of change in registrant information, the Complainant filed a first amendment to Complaint on July 17, 2007 and a second related amendment to the Complaint on July 18, 2007. The Center verified that the Complaint together with the amendments to 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 July 23, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 12, 2007. The Response was filed with the Center on July 25, 2007.

The Center appointed Miguel B. O'Farrell as the sole panelist in this matter on August 8, 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.

On August 14, 2007, the Complainant submitted an unsolicited supplemental filing replying to the Respondent’s arguments. On August 18, 2007, the Respondent provided an unsolicited supplemental filing replying to the Complainant’s supplemental communication. As the Parties’ supplemental filings merely argue the merits of the case without invoking any exceptional circumstances to justify their acceptance, the Panel decides not to take account of these supplemental filings.

 

4. Factual Background

The Complainant is a well known Mexican government system by means of which both private and public sector workers gain access to affordable credits for buying a house or improving their own.

The Complainant owns several Mexican INFONAVIT trademark registrations which were registered prior to the Respondent’s registration of the disputed domain name.

The Complainant owns several Mexican trademark registrations for INFONAVIT, Reg. No. 531.769, in international class 36, granted on September 24, 1996, Reg. No. 531.573, in international class 37, granted on September 24, 1996, and Reg. No. 462.315, in international class 36, and granted on February 25, 1994. All of them are currently in force and were first used in commerce in April 24, 1972.

On November 2, 2006, the Respondent registered the disputed domain name <infonavit.cc>.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends the following:

The domain name in dispute is identical or confusingly similar to trademarks in which it has rights.

INFONAVIT is an acronym of the Complainant’s name: INSTITUTO DEL FONDO NACIONAL DE LA VIVIENDA PARA LOS TRABAJADORES.

The disputed domain name <infonavit.cc> was registered in November 2, 2006 and therefore, the Complainant’s rights in the INFONAVIT mark predate the registration of the disputed domain name.

The disputed domain name <infonavit.cc> is identical to the Complainant’s mark. Thus, the Complainant states that the confusion between the disputed domain name and the Complainant’s trademark is evident.

The elements “.cc” and “www.” are not relevant in order to determine the confusion between a trademark and a domain name.

The INFONAVIT mark and the disputed domain name are graphically, phonetically and ideologically identical.

Infonavit is a well known Mexican government system, created on April 24, 1972, by means of which both private and public sector workers gain access to affordable credits for buying a house or improving their own.

The Respondent has never been given permission to register the disputed domain name <infonavit.cc> or any other related to INFONAVIT. Respondent is not a licensee and has not in any way been authorized to use the Complainant’s mark.

The Respondent is using at its website “www.infonavit.cc” the INFONAVIT mark Reg. No. 462.315 in order to reflect information regarding the service rendered by the Complainant.

The Respondent is not commonly known by the disputed domain name.

The Respondent does not have legitimate interests since the website “www.infonavit.cc” clearly states that it is not the official website of INFONAVIT.

The abovementioned circumstances are sufficient to state a prima facie absence of rights or any legitimate interests in the disputed domain name since the Respondent is using the INFONAVIT mark in the website “www.infonavit.cc”, without any authorization by Complainant.

It is evident that Respondent has been aware of the Complainant’s trademarks at the moment of registration and use of the disputed domain name.

The Respondent has registered and used the disputed domain name in bad faith, with the purpose of attracting, for commercial gain, Internet users to the website and to other on-line locations by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliations or endorsement of the disputed domain or location.

The Respondent is attracting Internet users to its website “www.infonavit.cc” by providing information on the activities of the Complainant, reproducing the INFONAVIT mark, and using links which direct Internet users to other on-line locations that offer services of third parties that compete with the services rendered by the Complainant.

B. Respondent

In defense of its registration of the disputed domain name, Respondent contends the following:

The Respondent does not use the disputed domain name for commercial use, defamation and/or other bad faith purpose.

The Respondent acknowledges its error and/or mistake in good faith, of inserting the Complainant’s INFONAVIT design on its website “www.infonavit.cc.” Therefore, Respondent has removed the mentioned design from its website on July 17, 2007.

The website “www.infonavit.cc” is an information website to help the Mexican population, and it is not the official website of the Complainant.

The Respondent has constitutional rights as a citizen, to take this initiative and let the Mexican population know about their rights, their options and their opportunities.

The objective of the website under the disputed domain name is to get more people to know about this government program denominated “Infonavit”. The website does not collect any kind of information from its users and does not offer professional or any other kind of services.

There are other websites with domain names identical to Mexican government offices or programs such as “www.inegi.com.max”, “www.sep.com.mx”, “www.ife.com.mx” among others.

There are hundreds of Mexican websites that contain information on how to take advantage of this government program denominated “Infonavit”.

The Respondent is making a legitimate, noncommercial and fair use of the disputed domain name, since the advertising used on the website hardly pays for its maintenance and hosting.

The website under the disputed domain name is not intended to harm or tarnish the image of the “Instituto Nacional del Fondo de la Vivienda para los Trabajadores” or to confuse visitors for commercial purposes.

The advertisements in the website “www.infonavit.cc” do not compete in any way with the services rendered by INFONAVIT.

Lastly, the Respondent expressly acknowledges that the Complainant’s INFONAVIT mark was registered long before Respondent registered the disputed domain name <infonavit.cc>.

 

6. Discussion and Findings

To qualify for cancellation or transfer, the Complainant must prove each element of paragraph 4(a) of the Policy, namely:

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

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

(iii) The disputed domain name has been registered and is being used in bad faith.

In accordance with paragraph 15(a) of the Rules, the Panel 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.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name <infonavit.cc> is identical to the INFONAVIT mark in which the Complainant has rights.

Therefore, the Panel finds that the Complainant has proved the first element required in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

According to paragraph 4(a)(ii), the second element that the Complainant must prove is that the Respondent has no rights or legitimate interests in respect of the domain name in dispute. The Policy in its paragraph 4(c) sets out various ways in which a Respondent may demonstrate rights or legitimate interests in the domain name, as follows:

“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 (Respondent) 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 (Respondent) are making a legitimate non-commercial 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.”

Although the Policy states that a complainant must prove each of the elements in paragraph 4(a), it is often observed that it is difficult for a complainant to prove a negative, i.e. that a respondent has no rights or legitimate interests in respect of a domain name. It has therefore become generally accepted under the Policy that, once a complainant has presented a prima facie showing of a respondent’s lack of rights or legitimate interests in a domain name, the burden of submitting evidence then shifts to the respondent. The respondent must then demonstrate its rights or legitimate interest in the domain name in order to refute the prima facie case.

The Panel, after considering all of the evidence in the Complaint and the exhibits attached thereto, finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. That prima facie case comes from the facts that (1) the Complainant has not authorized the Respondent to use its well known name and trademark INFONAVIT, (2) there is no evidence that the Respondent was known as “Infonavit” before the disputed domain name was registered and (3) there is no evidence showing that Respondent has any trademark or service mark rights in the name.

The Respondent seeks to rebut the prima facie case by arguing that it has legitimate interests in the domain name based on its constitutional right of freedom to inform people about the Infonavit Mexican government program.

The Panel finds that Respondent has the right to publish its ideas by any means of communications without prior censorship, including the Internet, but this right does not under the circumstances of this case, comprise registration and use of a domain name identical to the Complainant’s INFONAVIT mark, without the latter’s previous authorization.

In that regard, a prior WIPO UDRP panel has stated that “[while] Respondent may be free publicly to comment on the Internet in respect of the Complainant’s vehicle retail services, such freedom does not confer a right or legitimate interest in the use of a domain name which is identical to the Complainant’s trademark” Arnold Clark Automobiles Limited v. Thomas (aka Tam) Coughlan, WIPO Case No. D2002-0909. Respondent, in this case, has not established sufficient evidence of any legitimate interests or fair use in the sense of paragraph 4(c)(iii) of the Policy.

In addition, there is no evidence that Respondent is commonly known by the domain name, nor is there evidence showing that Respondent operates a business or any other organization, nor does it appear to offer any goods or services under the INFONAVIT mark or name. Thus, Respondent’s use of the disputed domain name cannot be considered a bona fide use, nor fair or non-commercial, particularly since its website “www.infonavit.cc” has sponsored links that transfer visitors to other on-line locations that offer services of credit and/or real state.

For the above reasons, the Panel finds that, Complainant has proved as required in paragraph 4(a)(ii) of the Policy, that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the third element that Complainant must prove is that the domain name has been registered and is being used in bad faith.

The Policy in its paragraph 4(b) sets out various circumstances which may be treated by the Panel as evidence of the registration and use of a domain name in bad faith, as follows:

“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 [Respondent] 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 [Respondent] 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 [Respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you [Respondent] 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”.

As contended by the Complainant, the Panel finds that by using the domain name <infonavit.cc> Respondent has attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark.

This is evidenced by the fact that the Respondent’s website “www.infonavit.cc” has sponsored links that transfer visitors to other on-line locations, which offer services of credit and/or real state, which are competing or strongly related services to the ones offered by the Complainant.

Furthermore, it is not contested that Respondent knew of the Complainant’s Mexican trademark registrations for INFONAVIT prior to registering the disputed domain name <infonavit.cc> on November 2, 2006.

For these reasons, the Panel finds that Respondent both registered and uses the domain name in bad faith, and that Complainant has therefore made out the third element of its case.

 

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 <infonavit.cc> be transferred to the Complainant.

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Miguel B. O'Farrell
Sole Panelist

Dated: August 22, 2007