DECISION

 

Yupi Internet Inc. v. Mercantil Inc.

Claim Number: FA0207000117302

 

PARTIES

Complainant is Yupi Internet Inc., Miami Beach, FL, USA (“Complainant”) represented by Robin L. McGrath, of Alston & Bird, LLP.  Respondent is Mercantil Inc., George Town, GRAND CAYMAN (“Respondent”) represented by Luis Vidal Hamilton-Toovey, of Carey Allende & Asociados.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <amarillas.com>, registered with Tucows, Inc.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 29, 2002; the Forum received a hard copy of the Complaint on August 1, 2002.

 

On July 30, 2002, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <amarillas.com> is registered with Tucows, Inc. and that the Respondent is the current registrant of the name.  Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On August 2, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 22, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@amarillas.com by e-mail.

 

A timely Response was received and determined to be complete on August 22, 2002.

 

Complainant’s additional submissions were received on August 26, 2002.  Respondent’s additional submissions were received on September 3, 2002.

 

On September 11, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

 

Headquartered in Miami Beach, Florida, Complainant is the owner and operator of Spanish-language Internet websites located at the URLs <yupimsn.com>, <ciudadfutura.com> and, until recently, <amarillas.com>.

 

Launched in 1996, Complainant’s flagship website, <yupi.com>, which is now located at <yupimsn.com> (in August of 2001, T1msn, Corp., a joint venture of Microsoft and the Mexican telephone company Telmex, acquired Complainant and launched YUPIMSN), is an Internet portal which provides Spanish speaking people with ready access to news, information and services.  Through <yupimsn.com>, visitors can, with a mere click of a button, access a myriad of Internet services, such as chat rooms and e-mail, in addition to information about a wide-variety of topics such as entertainment, news, weather, sports, education, technology and tourism among many others.  Complainant’s <ciudadfutura.com> website is one of the world’s first Spanish-language online communities which is supported by over 300 webmasters from around the world.

 

In July of 1999, Complainant acquired the registration for the domain name <amarillas.com> from an Argentinean company Comint-ar S.A.  Complainant first began using the AMARILLAS marks in August of 1999.  In May of 2000, Complainant launched a new website at <amarillas.com> a comprehensive, business-to-business bilingual Internet portal to Latin America, Spain and the United States.  The domain name <amarillas.com> was designed to serve as a tool to help businesspeople identify and develop international trade opportunities and business relationships.  Complainant’s relationships with trade associations, chambers of commerce, trade multipliers, industry associations and corporate leaders provided a comprehensive database of over 150,000 registered companies.  Membership to <amarillas.com> offered businesses numerous benefits and advantages.  For instance, registered members received in-depth industry specific content, including editorial briefs, corporate profiles, event and conference listings and industry guides, on various business sectors in over 28 countries and 216 industries.  Members were also given access to such services as e-mail and forums, as well as a directory of corporate homepages designed to identify buying and selling opportunities. 

 

Much of the success of Complainant’s <amarillas.com> website was due, in no small part, to the substantial international advertising and promotional efforts in which Complainant engaged.  Complainant spent over a hundred thousand dollars in a single year to advertise and promote the AMARILLAS marks.  In addition to print advertisements in pan-regional publications such as Nexos, American Airlines’ in-flight magazine, Complainant has used such highly visible media as large billboards strategically placed on high traffic highways in major cities such as New York, Los Angeles and Miami.  Complainant’s <amarillas.com> advertisements have also adorned the backs of airport shuttles and the tops of taxicabs in major metropolitan cities.

 

The services offered by Complainant in connection with the AMARILLAS marks have also received extensive coverage in the media, with articles appearing in such print and online publications as The Wall Street Journal, Forbes, USA Today, the LA Times, CNN en Espanol, The Miami Herald, Miami Business Magazine, The Sun-Sentinel, Reuters, Daily Business Review, LatinCEO, American Airline News, Hispanic Magazine.com, Freemarkets.com, Hoovers Online and flashcommerce.com.  Complainant has also issued numerous press releases concerning the <amarillas.com> website.  As shown by numerous third party websites identifying the amarillas marks as being owned by Complainant, one need only perform a cursory Internet search to conclude that since Complainant’s adoption of <amarillas.com>, it has been identified by the public exclusively with Complainant.

 

In addition to the <amarillas.com> domain name registration, Complainant is also the owner of domain name registrations for the domain names <amarillas.com.mx> (Mexico), <amarillas.es> (Spain), <amarillas.net.do> (Dominican Republic), <amarillas.com.gt>, <amarillas.net.gt> (Guatemala), <amarillas.com.ni> (Nicaragua), <amarillas.com.pa> (Panama), <amarillas.com.pr>, <amarillas.net.pr> (Puerto Rico), and <amarillas.com.ve> (Venezuela).  Additionally, Complainant has embarked on an international service mark registration program, with issued service mark registrations for either the mark AMARILLAS or AMARILLAS.COM in Venezuela, Peru, Ecuador, Guatemala, Honduras and El Salvador.  Service mark applications for AMARILLAS or AMARILLAS.COM are pending in the United States, Argentina, Brazil, Mexico, Bolivia, Nicaragua, Paraguay, and Uruguay.

 

In April of 2002, unbeknownst to Complainant, Complainant’s <amarillas.com> domain name registration expired.  Complainant never received the renewal notices that Verisign claims to have sent it.  Moreover, it had always been Complainant’s experience that Verisign would send electronic notices to Complainant’s designated contact for the domain name, but in this case, Complainant never received any such electronic notice.  In June of 2002, Complainant learned that Respondent had registered the domain name <amarillas.com>.  When Complainant learned about the lapse in its registration, it tried without success to work with Verisign to remedy the situation.  However, Verisign could not explain why Complainant never received any renewal notices and indicated that it was unable to help Complainant reacquire the domain name.  Because Verisign did not renew the registration, the <amarillas.com> domain name became available for registration to the general public on April 8, 2002.

 

According to Respondent’s <mercantil.com> website, Respondent was founded in 1990 as a Latin American directory for small and medium-sized enterprises.  Although it provides services in direct competition with those provided by Complainant, neither the parties’ businesses, their websites nor the services offered in connection therewith are affiliated in any way.

 

According to a time line on its <mercantil.com> website, Respondent launched its first website in 1995, which it claims provided a bilingual on-line Latin American business directory.  In the “about us” section of its site, Respondent indicates that in 1999 it launched “Mercantil.com,” a site that Respondent currently bills as “Latin America's leading Business-to-Business ("B2B") site for small and medium-sized enterprises (SMEs).”  Today, Respondent claims to be evolving toward “a total eCommerce solution for SMEs” offering businesses the ability to buy and sell goods and services throughout the region and the world.  Respondent’s goal as stated on its <amarillas.com> website is “to become THE one and only destination for SMEs.”

 

On April 14, 2002, less than a week after Complainant’s <amarillas.com> registration expired, Respondent quickly seized on Complainant’s misfortune by registering with Tucows, Inc. the domain name of its competitor – <amarillas.com>.  Respondent’s intent in registering the <amarillas.com> domain name was made clear in an article appearing on the home page of its <mercantil.com> website and the site Respondent now operates under <amarillas.com>. The article was written by BNAmericas and dated June 20, 2002 (the “BNA article”).  According to the BNA article, by registering Complainant’s <amarillas.com> domain name, Respondent “stands to gain extra income from advertising since the larger directory will increase traffic to the site, and the site’s clients will also benefit from a new tool to position themselves in Europe . . . .”  In other words, by registering a domain name that is as well known to the public as <amarillas.com>, Respondent hopes to substantially increase its financial bottom line by attracting more traffic to its site.  Put more succinctly, Respondent hopes to directly profit from the goodwill of Complainant’s AMARILLAS marks.

 

Respondent’s intent in this respect is further made clear by the blatant lies Respondent’s chairman Jaime Vargas told to the BNA reporter regarding the relationship between Respondent and Complainant, as quoted in the BNA article.  Specifically, the BNA article indicates that Respondent “acquired the company directory <amarillas.com> (www.amarillas.com)” and then attributes that statement to Chairman Vargas, who, according to the article, made the announcement “without revealing the transaction figure.”  This blatantly misleading account leads people to believe that Respondent purchased the assets of the <amarillas.com> business, when in fact Respondent only – and without authorization from Complainant – registered the <amarillas.com> domain name.  The false notion that Respondent purchased Complainant’s business is further supported by the following statement in the BNA article:

 

The companies closed the sale in May and are now integrating their platforms, cleaning up their databases and setting up a portal, Vargas said.  The acquisition provides Respondent with access to a directory of almost four million companies in 24 countries throughout Latin America.  . . . Respondent performed the operation without resorting to external financing, Vargas said, and rather than give an idea of the transaction value he said it was simply a very good opportunity they decided to take advantage of.

 

Many of these same false and misleading statements also appear in a press release issued and widely circulated by Respondent.  However, there is not a shred of truth to any of the foregoing representations.  Simply put, these statements are pure fabrication.  Respondent never acquired any database, directories or other assets of Complainant, including those associated with the <amarillas.com> website.  As indicated above, the only thing Respondent “acquired” was a registration for the <amarillas.com> domain name and that was acquired not from Complainant, but improperly through the Registrar Tucows.

 

Shortly after registering the domain name, Respondent launched its <amarillas.com> website.  It is clear from Respondent’s home page that Respondent is offering many of the identical B2B services that Complainant offered through the original, authentic <amarillas.com> site and is targeting the identical market.  Moreover, in the “about us” section of the Respondent’s <amarillas.com> site, Respondent misleadingly claims that <amarillas.com>  (as opposed to <mercantil.com>) “was founded in 1990.”  This statement is misleading because Respondent only acquired the domain name registration in 2002, whereas prior to that time the registration was owned by Complainant.  By stating that <amarillas.com> was founded in 1990, consumers are likely to mistakenly conclude that Respondent has continued the business originated by Complainant, when in fact nothing could be further from the truth.

 

B. Respondent

Mercantil, Inc. (“Respondent”) is a corporation duly organized under Cayman Islands Law. It is the parent company of Chilnet S.A. and also the owner of the trilingual business portal <mercantil.com> with a proprietary database of over 1.5 million companies.

Chilnet S.A. (“Chilnet”) is a Corporation organized under the Republic of Chile’s corporations law. It was founded in 1990 (originally as Fax Chile S.A.) as a company that developed a printed Business Directory of Chilean companies. Subsequently it also evolved into Chilean's first Internet based business to business (“B2B”) directory. Chilnet has a B2B portal under the domain name <chilnet.cl>, also known as Chilnet Yellow Pages, with a proprietary database of over 65,000 companies.

 

At this time, Chilnet still handles this business directory in printed and online versions. The printed version has white and yellow pages. The online version has evolved towards offering eBusiness solutions for small and mid-size companies (“SMEs”), on top of other contents in the business portal and the online business directory.

 

Both Portals, allow members to expand and personalize their listings, build a free or paid-for homepage, list their products and services on-line, and market their brands to the world. The Portals also have a News section, Business Opportunity identification tools, companies’ Financial Information research and many others features, and content.

 

On May 14, 2002 Respondent was advised by its external marketing advisors, Nexsa S.A., that Buydomains.com (“the world’s leader domain market”, according to their own site presentation) was publicly offering the domain name <amarillas.com>. Also Chilnet personnel had detected sometime earlier to this date, that the site <amarillas.com> had been out of service.

 

The Spanish term “amarillas” is the plural Spanish word for “yellow” and is a common or descriptive term for yellow pages or business directories. Although it does not qualify for much trademark protection, and nobody can avoid or stop other companies to include this term in their own marks, as a common term it has value by itself. Throughout all Latin America many marks include this term in their business names and domain names. The owners of such business names and domain names are not entitled to avoid the use of these words in other names. It is common knowledge that by using common terms in a domain name, the owner of the name will have less protection against the users of similar domain names than he would if his domain name was distinctive.

 

Nevertheless, Respondent acquired (through Chilnet) the domain name <amarillas.com> and decided to build an International Business Portal under the domain name <amarillas.com> merging its platforms and databases from Chilean and Latin American companies with others from North American and European countries. Four platforms and databases, in addition to the new ones, were merged: <mercantil.com>, <chilnet.cl>, <export.cl> and <import.cl>.

 

In doing this, Respondent assessed that the shortness of the term represented a value its clients would appreciate, specially under the consideration that business and commercial directories of phone books are commonly called “amarillas” in Spanish, a short term for Yellow Pages.

 

For the purpose mentioned above, Respondent did not register but acquired the domain name to who was at the moment its legitimate owner. In doing this, Respondent executed the regular process, including payment, established by Buydomains.com.

 

It is a very important fact related to this case that this domain name was being offered to any person who wanted to buy the domain name through the website <buydomains.com>, for an unknown period of time.

 

Respondent thought it was good for its business and seized this opportunity. Yupi Internet, Inc. (“Complainant”) lost this domain name because of its carelessness to pay the registration fee.  It is a duty of the officers of a company to take proper care of its assets. The truth is that Complainant was careless with this domain name or, even worst, did not want to renew its registration. It is obvious that once Complainant realized that Respondent had acquired it and was bringing new value to it, Complainant had second thoughts about it and decided to initiate this Complaint.

 

One thing is for sure: Complainant did not give value to this domain name. It has a value of its own in the Spanish language, and this was the main reason why Respondent decided to acquire this domain name, publicly available at the time.

 

Finally, and very important, Respondent had not intended and does not want to be related to or being identified in any way with Complainant, since to Respondent’s best knowledge Complainant didn’t have a good corporate image in the countries where Respondent had operations, because of its financial troubles, before Microsoft and Telmex acquired it.

 

We must add to this, that in the Press Release communicating the Microsoft and Telmex acquisition of Complainant there is not a word related to <amarillas.com>.

 

Respondent issued only one press release to communicate an important fact related to its business. This press release (in Spanish) stated that Respondent had acquired the domain <amarillas.com>.

 

In Respondent’s press release nothing was said about acquiring assets of Complainant. Respondent has no interest in being associated to Complainant due to its former financial problems. What Respondent said was that it had acquired the domain name <amarillas.com> and was integrating its platforms from business directories <chilnet.cl> and <mercantil.com>, into this new world class portal being developed in 3 languages. In doing this, Respondent achieved through <amarillas.com> access to a directory built by its own personnel, of almost four million companies in 24 countries throughout America and Europe.

 

The translation into English language of this press release issued by Respondent (in Spanish) was made by Chilean journalist of BNAmericas, Claudio Ramirez, after a short telephone interview with Mr. Vargas from Respondent, in June 2002.

 

The Complainant wants to make Respondent appear as if it wanted to be identified with Complainant. This was not Respondent’s purpose, and the only intention of the press release was to let Respondent’s and Chilnet’s clients know that they had a new way of accessing the old and new platforms of Respondent in one single site: the recently acquired <amarillas.com>.

 

Complainant claims that Respondent did inaccurate and misleading statements in the press release and in a news article published through “Business News America” on June 20, 2002. Their concern is that in those sources Respondent appears as claiming that it “has acquired the business of <amarillas.com> and that the companies are setting a new portal”. Complainant continues to affirm that Respondent falsely claims that the acquisition provides Respondent with access to a directory of four million companies in 24 countries throughout Latin America, North America and Europe.

 

Business News America is a news provider of Respondent and as it can be seen in the original press release made by Respondent in Spanish  and the article published by BNA in English, there are some differences, Respondent assumes it happened due to “translation problems”.

 

On a close reading of the translation of the original press release it can be seen that Respondent informed that it acquired <amarillas.com>, which is not a company but a domain name. Respondent has never publicly disclosed the name of the seller of the domain, nor any transactional details (the seller was an internet brokerage firm).

 

After this domain name was acquired, Respondent built with its own resources a worldwide business portal located at <amarillas.com>. In this portal Respondent merged its directories <mercantil.com>, <chilnet.cl> and two other existing proprietary portals which –in total- give access to a directory of four million companies in 24 countries throughout Latin America, North America and Europe.

 

Respondent’s Press Release is accurate and true.

 

Respondent and its subsidiaries have registered and filed for registration in Chile, various marks that include the terms “yellow pages” and “páginas amarillas”.

 

There are also some other domain names registered by Respondent and its subsidiaries that include those terms. These are:

*   <amarillasdelsur.com>

*   <yellowsouth.com>

*   <amarillasempresariales.com>

 

Furthermore one of the domain names that Complainant falsely claims to own is registered in Respondent’s name. This is:

*   <amarillas.com.mx>

 

Complainant claims that they did “substantial international advertising” of <amarillas.com> and that that effort brought “success” to Complainant’s website. This is a misleading statement.  All this happened during the first half of year 2000; two years ago; last century in terms of Internet. And it must be added that Complainant’s website wasn’t really a successful one, since nobody in the company even realized that they had lost the domain name for an important period of time (several weeks).

 

 

C. Additional Submissions

The parties submitted documentation in their additional responses that clarified certain issues.

 

FINDINGS

 

Given the complexity of the details involving this matter, the Panel wishes to set for the chronology of events:

 

1999                                                        Complainant commences business operations.

July, 1999                    Complainant acquires the <amarillas.com> domain name from Comint-ar S.A.

August, 1999                Complainant begins to use <amarillas.com>.

April 14, 2000              Complainant files a United States trademark application for <amarillas.com>.

August 2000                 Complainant revamps <amarillas.com> and begins substantial advertising.

November 17, 2000     The United States Patent and Trademark Office mails a non-final action concerning the <amarillas.com> trademark application.

May 17, 2001              The United States Patent and Trademark Office received a communication from Complainant.

August, 2001                T1MSN Corp. acquires Complainant

August 27, 2001           The United States Patent and Trademark Office mails a final action concerning the <amarillas.com> trademark application.

November 26, 2001     Verisign mailed a paper invoice for <amarillas.com> to Complainant in Plantation, Florida, but Complainant claims it wasn’t received.

December 30, 2001     Verisign mailed a second paper invoice for <amarillas.com> to Complainant in Plantation, Florida, but Complainant claims it wasn’t received.

January 31, 2002          Verisign mailed a paper ten-day notice to Complainant in Miami, Florida, but Complainant claims it wasn’t received.

February 14, 2002       Verisign mailed a second paper ten-day notice to Complainant in Miami, Florida, but Complainant claims it wasn’t received.

April 8, 2002                <amarillas.com> was deleted for non-payment.  At the time of deletion, <amarillas.com> was forwarded to <yupimsn.com> even though <amarillas.com> was not active itself.

April 14, 2002              Respondent purchases <amarillas.com> from BuyDomains.com for $15,000.00.

May 5, 2002                The United States Patent and Trademark Office declares the <amarillas.com> trademark application abandoned due to a lack of response.

July 8, 2002                 The United States Patent and Trademark Office receives a petition to revive from Complainant concerning the <amarillas.com> trademark application.  No ruling has been issued on the petition to date, but such petitions are only rarely granted.

July 29, 2002               This proceeding was commenced.

 

 

DISCUSSION

 

The ownership of the <amarillas.com.mx> domain name is still uncertain to the Panel, but that issue does not affect the outcome of this case.  No declarations by third parties were submitted.

 

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

 

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)   the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

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

(3) the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

Complainant has a service mark for AMARILLAS and AMARILLAS.COM based on its continuous use since 1999.  Complainant obtained <amarillas.com> in 1999 from a Argentinean company, and immediately began using the domain name in relation to its business-to-business bilingual Internet portal to Latin America, Spain and the United States.  The <amarillas.com> domain name was designed to serve as a tool to help businesspeople identify and develop relationships with trade associations, chambers of commerce, trade multipliers, and industry associations.  Corporate leaders also provided the website with a comprehensive database of over 150,000 registered companies.  Membership to <amarillas.com> also offered businesses numerous benefits and advantages including; in-depth industry specific content, including editorial briefs, corporate profiles, event and conference listings and industry guides, on various business sectors in over 28 countries and 216 industries.

 

In order to promote its <amarillas.com> website, Complainant engaged in substantial international advertising and promotional efforts.  Complainant spent over a hundred thousand dollars in one year to advertise and promote the AMARILLAS.COM and AMARILLAS marks.  Complainant advertised in pan-regional publications and on billboards, airport shuttles and taxicabs in major cities such as New York, Los Angeles and Miami.

 

Complainant has registered the AMARILLAS.COM mark in Venezuela, Peru, Ecuador, Guatemala, Honduras and El Salvador.  Service mark applications are pending in Argentina, Brazil, Mexico, Bolivia, Nicaragua, Paraguay, and Uruguay (it should be noted the United States application is very unlikely to be reopened because it was deemed abandoned).  Complainant has also registered various AMARILLAS domain names in various country codes throughout the world including: Mexico, Dominican Republic, Guatemala, Puerto Rico, Venezuela.

 

Complainant’s domain name registration <amarillas.com> apparently lapsed due to an error by Verisign Inc. (or perhaps Complainant itself).  Complainant asserts it never received any renewal notices, and as a result its domain name registration for <amarillas.com> expired in April of 2002, unbeknownst to Complainant.  Verisign told Complainant in June of this year that it was unable to help Complainant reacquire the domain name because the domain name had been registered by Respondent on April 14, 2002.

 

Respondent’s <amarillas.com> domain name is identical to Complainant’s AMARILLAS.COM service mark(s) because it incorporates Complainant’s entire mark.   Respondent’s <amarillas.com> domain name is identical to Complainant’s AMARILLAS service mark(s) because it incorporates Complainant’s entire mark.  The Panel finds Respondent’s domain name is identical to Complainant’s mark because the addition of a top-level domain such as “.com,” is irrelevant when determining whether the disputed domain name is identical.  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

 

While the marks may be somewhat descriptive, the Panel will not go behind the registration of the marks to determine their validity under local law.  The mere fact the registration was issued is sufficient for the Panel.

 

Rights or Legitimate Interests

The Panel finds there is a presumption Respondent has no rights or legitimate interests in the disputed domain name based on Complainant’s previous holding of the registration for <amarillas.com>.  See American Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that Complainant’s prior registration of the same domain name is a factor in considering Respondent’s rights or legitimate interest in the domain name).

 

While it is very hard to prove a negative, Respondent has a safe harbor pursuant to Uniform Dispute Resolution Policy §4(c)(i): before any notice to the Respondent of the dispute, Respondent’s 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.  The information being offered here is real information and the transactions are real transactions.  There is no claim Respondent’s transactions are shams.

 

Complainant never contacted Respondent before Respondent began to use the <amarillas.com> domain name.  Complainant knew the <amarillas.com> domain name registration had lapsed and Respondent acquired it.  Instead of promptly contacting Respondent to advise Respondent of this, Complainant did nothing.  Respondent built and installed a website for the domain.  While the UDRP policy might well help in a lapsed domain name case, it won’t help those that continue to slumber on their rights by failing to contact Respondent before Respondent incurs substantial expenses in creating a website at a newly acquired domain name.

 

Registration and Use in Bad Faith

Complainant must prove Respondent both registered and used the domain name in bad faith.  Bad faith can be shown a number of ways, such as:

 

Circumstances indicating Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name.

The facts of this case do not support such a finding.

 

Respondent has 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 Respondent has engaged in a pattern of such conduct.

The facts of this case do not support such a finding.  There was no claim of a pattern of conduct.

 

Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor.

The facts of this case does not support such a finding, especially since this domain name was set up to forward to another website and Complainant did not provide any information on how much traffic came via <amarillas.com> and how much traffic arrived directly.  There was no showing that Complainant’s business was materially disrupted, much less that the domain name was acquired primarily to disrupt Complainant’s business.

 

By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to 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 Respondent’s website or location or of a product or service on Respondent’s website or location.

This happens automatically to some degree when a domain name acquires a new owner.  Given the evidence of this case, Complainant has not proved this fact in light of the descriptive nature of the marks in question.

 

DECISION

For the foregoing reasons, the domain name shall NOT be transferred.

 

 

 

Houston Putnam Lowry, Chartered Arbitrator and Panelist
Dated: September 19, 2002

 

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