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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. Jordan Smith

Case No. D2008-1397

1. The Parties

The Complainants are Administradora de Marcas, RD, S. de R.L. de C.V. of ZUG, Switzerland, and Radiomovil Dipsa S.A. de C.V. of Mexico City, Mexico, represented by Basham, Ringe y Correa, S.C. of Mexico.

The Respondent is Jordan Smith of Texas, United States of America.

2. The Domain Name and Registrar

The disputed domain name <telcel.net> (the “Domain Name”) is registered with Network Solutions, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on September 12, 2008 and in hard copy on September 16, 2008.

The Center transmitted its request for registrar verification to the Registrar on September 15, 2008. The Registrar responded the same day, providing the contact details in respect of the registration and confirming that the Domain Name was registered with it, that the registration was active, that the language of the registration agreement was English, that the registrant had submitted to the jurisdiction at the location of its principal office for court adjudication of disputes concerning or arising from the use of the Domain Name, that it would not change the status of the Domain Name except as provided in paragraph 3 of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), and that the Domain Name would remain on registrar lock during this proceeding.

The Center verified that the Complaint satisfied the formal requirements of 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 17, 2008. On September 26, 2008, the Complainants’ representative requested a suspension of the proceeding because they were negotiating with the Respondent. By email of September 29, 2008, the Center suspended the proceeding until October 26, 2008.

By email of October 10, 2008, the Respondent informed the Center that the parties had reached an agreement under which the Domain Name would be transferred to the Complainant for USD 1,000. However, by email of October 24, 2008, the Complainants’ representative informed the Center that the negotiations had not been successful and asked the Center to proceed with the appointment of the Panel. By email of October 27, 2008, the Center forwarded the Complainants’ representative’s email to the Respondent and confirmed that the new due date for the Response would be November 6, 2008. The Respondent replied to that email the same day stating that he had agreed to transfer the Domain Name under the terms offered by the Complainants.

The Respondent did not submit a Response. Accordingly, the Center notified the Respondent’s default on November 10, 2008. By email of November 11, 2008, the Respondent stated that he did not default, that he had reached an agreement with the Complainants to transfer the Domain Name and was awaiting the transfer request from them, and that he had not been given any instructions that he should be preparing a response or any deadline. The Center replied to the Respondent by email on November 11, 2008, noting that it had informed the parties by email on October 27, 2008 that the proceeding was reinstituted on that date and that the new due date for the Response was November 6, 2008: that if the Respondent wished to communicate further with the Complainants regarding a possible settlement, the Center required a signed suspension request from them by November 14, 2008, failing which the Center would proceed to appoint the Panel: and that the admissibility of any further filings was in the discretion of the Panel.

The Center appointed Jonathan Turner as the sole panelist in this matter on November 19, 2008. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules.

4 Procedural Ruling

In accordance with paragraph 17(a) of the Rules, the Panel must terminate the proceeding if the parties agree on a settlement before the Panel’s decision. In the absence of any evidence, the Panel does not accept the Respondent’s assertions that there has been a settlement and will proceed to a decision.

5. Factual Background

The Second Complainant operates a major telecommunications business with some 50 million customers in Mexico under the mark TELCEL. This mark is registered in Mexico for communications and various other services in the name of the First Complainant as proprietor and licensed to the Second Complainant.

The Second Complainant has a website at “www.telcel.com”. Between November 1, 2007 and December 31, 2007, the website received over 3.5 million visits from Mexico and over 100,000 from the United States of America.

The Domain Name resolves to a web page displaying links to websites of other companies offering telecommunications products or services and indications that it is for sale. The Complainants offered to buy the Domain Name for USD 1,000 through Sedo with which it was registered for sale. The Respondent counter-offered to sell it for USD 8,200. The Complainants made a revised offer of USD 1,100: the Respondent revised his price to USD 7,999.

6. Parties’ Contentions

A. Complainants

The Complainants submit that the Domain Name is identical to the registered marks owned by the First Complainant and licensed to the Second Complainant.

The Complainants further contend that the Respondent does not have any right or legitimate interest in respect of the Domain Name. They point out that he is not commercialising any kind of product or service, that he is not commonly known by the Domain Name and that he is not making legitimate non commercial or fair use of the Domain Name. On the contrary, they note that the Respondent is taking unfair advantage of the fame of their mark to promote other telecommunications products and services and to sell the Domain Name for an excessive price.

Finally, the Complainants allege that the Respondent registered and is using the Domain Name in bad faith. They emphasise that their TELCEL mark is well-known in parts of the United States of America as well as Mexico and that the Respondent must have been aware of it when he registered the Domain Name. They say that the Respondent evidently acquired the Domain Name for the purpose of selling it to the Complainants or a competitor of the Complainants for valuable consideration in excess of the price paid, the price sought by the Respondent through the Sedo site being much greater than the cost of registration. They also refer to the use of the Domain Name as a referral portal to websites offering competing products.

B. Respondent

As stated above, the Respondent did not reply to the Complainant’s contentions.

7. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainants must prove (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights: (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. Each of these requirements will be considered in turn below.

In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from the Respondent’s default in submitting a response as it considers appropriate. This includes the acceptance of plausible allegations of the Complainants which have not been disputed.

A. Identical or Confusingly Similar

It is clear that the Complainants have registered rights in the mark TELCEL.

The Domain Name differs from this mark only in the addition of the generic top-level domain suffix. It is well established that this suffix is to be discounted when carrying out the comparison required by paragraph 4(a)(i) of the Policy. The Domain Name is thus effectively identical to the Complainants’ mark.

The first requirement of the Policy is satisfied.

B Rights or Legitimate Interests

The Panel finds that the Respondent does not have rights or legitimate interests in respect of the Domain Name.

The Panel does not regard the Respondent’s use of the Domain Name for a web page merely displaying links to other websites and indications that the Domain Name is for sale as a bona fide offering of goods or services for the purposes of paragraph 4(c)(i) of the Policy.

The Respondent is not commonly known by the Domain Name. Nor is he making a legitimate non-commercial or fair use of the Domain Name without intent to divert consumers through confusion for commercial gain. On the contrary, the Panel finds that he is using the Domain Name intentionally to divert consumers through confusion with the Complainants’ mark via the links on his web page to websites offering products or services competing with those of the Complainants for commercial gain in the form of click-through commissions.

There does not appear to be any other basis on which the Respondent could claim to have rights or legitimate interests. The second requirement of the Policy is satisfied.

C Registered and Used in Bad Faith

The Panel finds that the circumstances indicate that the Respondent registered or acquired the Domain Name primarily for the purpose of selling it to the Complainants or a competitor of the Complainants for valuable consideration in excess of his costs. In this connection the Panel notes the indications on the Respondent’s web page that it is for sale, the fact that it is registered as being for sale with Sedo, and that the Respondent’s asking price was obviously in excess of the cost of registration.

In accordance with paragraph 4(b)(i) of the Policy, this constitutes evidence that the Domain Name was registered and is being used in bad faith.

As stated above, the Panel also finds that the circumstances indicate that the Respondent is using the Domain Name intentionally to divert consumers through confusion with the Complainant’s mark via the links on his web page to websites offering products or services competing with those of the Complainants for commercial gain in the form of click-through commissions.

This also constitutes evidence that the Domain Name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy.

There is no evidence which might displace these presumptions. The Panel concludes that the Domain Name was registered and is being used in bad faith. The third requirement of the Policy is satisfied.

8. 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, <telcel.net>, be transferred to the Second Complainant, Radiomovil Dipsa S.A. de C.V.

Jonathan Turner
Sole Panelist

Dated: December 3, 2008