Decisión del Panel Administrativo nº D2012-1572 of WIPO Arbitration and Mediation Center, October 30, 2012 (case Administradora de Marcas y Franquicias, S. A. de C. V. v. Marchex Sales, Inc./Brendhan Hight)

Resolution DateOctober 30, 2012
Issuing OrganizationWIPO Arbitration and Mediation Center
DecisionTransfer with dissenting opinion
DominioGeneric Domains

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Administradora de Marcas y Franquicias, S. A. de C. V. v. Marchex Sales, Inc./Brendhan Hight

Case No. D2012-1572

1. The Parties

The Complainant is Administradora de Marcas y Franquicias, S. A. de C. V. of Mexico D. F., Mexico, represented by Lex Informática Abogados, S. C, Mexico.

The Respondent is Marchex Sales, Inc./Brendhan Hight of Las Vegas, Nevada, United States of America, represented by Dr. John Berryhill, Esq., United States of America.

2. The Domain Name and Registrar

The disputed domain name [priceshoes.com] is registered with eNom (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2012. On August 3, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 3, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that 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 August 9, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response August 29, 2012. The Response was filed with the Center on August 29, 2012.

The Center appointed Torsten Bettinger, The Hon. Neil Brown Q. C. and Paul M. DeCicco as panelists in this matter on October 5, 2012. The Panel finds that it was properly constituted. Each member of 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.

Due to unforeseen circumstances, and the detailed nature of the filings by both parties, the panel extended the due date for the decision.

4. Factual Background

The Complainant is a catalog-based sales company, incorporated in Mexico in May 1996, which is engaged in the sale of footwear. The Complainant has secured numerous trademark registrations for its PRICE SHOES mark, the earliest of which is a Mexican word mark issued in 1996. The Complainant was granted a United States word-plus-design mark for a stylized drawing of the PRICE SHOES text in 2011. The Complainant maintains a web presence at “www.priceshoes.com.mx”, which it has operated since March 4, 1999.

The Respondent is a professional domain name registrant who specializes in the registration, monetization and sale of generic-word domain names. The Respondent registered the disputed domain name through a batch acquisition in 2005, and has used it in connection with pay-per-click (PPC) advertising.

The disputed domain name was registered on June 5, 2003.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that each of the elements of paragraph 4(a) of the Policy has been satisfied.

With regard to the first element under the Policy, the Complainant notes that the textual string of the disputed domain name is identical to its registered PRICE SHOES word marks, as well as to the textual elements of its word-plus design marks.

With regard to the second element, the Complainant states that the Respondent does not appear to be known by the name “price shoes”, that the Complainant has not authorized the Respondent to use its trademarks in any fashion, that the Respondent does not appear to be using the domain name in connection with a bona fide offering of goods or services, and that the Respondent does not appear to be the owner of any registered “price shoes” mark(s). The Complainant notes that the only use to which the Respondent has put the disputed domain name is to display PPC links, many of which connect to the websites of the Complainant’s direct competitors. Additionally, a number of these links connect to websites offering adult content, which appear to bear no relation to the terms “price” or “shoes”. Finally, the Complainant alleges that the Respondent is not making a legitimate noncommercial or fair use of the domain name.

Concerning the third element of the Policy, the Complainant avers that the Respondent knew or should have known of the Complainant’s pre-existing rights in its PRICE SHOES trademark, as the Complainant had been operating a website at “www. priceshoes. com. mx” for a number of years prior to the Respondent’s selection of the disputed domain name. The Complainant submitted a time-restricted Google search as evidence that its online presence would have been easily discoverable in 2003, prior to time the Respondent selected the domain name for registration. The Complainant additionally alleges that the Respondent’s asking price for the domain name, advertised on the Respondent’s PPC landing page, was so high as to indicate that the Respondent’s primary intent in selecting the domain name was to sell at a profit. The Complainant alleges that the Respondent’s use of “robots. txt” software provides additional evidence of the Respondent’s bad faith, by preventing access to the historical archives of the domain name. Noting the Respondent’s prior history as a UDRP respondent, and the close similarity of the domain name to its mark, the Complainant further alleges that the Respondent selected the domain name in order to prevent the Complainant from reflecting its mark in a domain name under paragraph 4(b)(ii) of the Policy. Finally, the Complainant notes the Respondent’s use of the domain name in connection with PPC links related to the Complainant’s area of business, and in many cases the websites of its direct competitors, and alleges that the Respondent’s actions constitute bad faith under paragraph 4(b)(iv) of the Policy.

B. Respondent

The Respondent contends that the requisite elements under paragraph 4(a) of the Policy have not been established by the Complainant, and requests the Panel to deny the requested relief.

The Respondent alleges that this case presents “an unusual issue in relation to territoriality of trademark rights”, in that the Complainant owns a word mark in its home jurisdiction (Mexico), but a later-registered word-plus-design mark in the Respondent’s location (the United States). The Respondent argues that since the Complainant has opted for the United States as its Mutual Jurisdiction election, the Complainant’s US mark should be more heavily weighted with regard to the findings of fact in the case, and that this bears some relevance to the finding of identity or confusing similarity under the circumstances. The Respondent does note, however, that the Complainant possesses rights in the PRICE SHOES mark, despite the descriptive nature of the words as used in the English language.

The Respondent alleges that it does possess rights and legitimate interests in the disputed domain name, as the textual string of the domain is comprised of two generic words. The Respondent notes that it is engaged in the purchase, trade, monetization and sale of dictionary-word domain names, and cites numerous previous UDRP cases in support of its legitimate business model.

The Respondent avers that, as the Complainant had not yet secured trademark protection in the United States at the time the Respondent registered the domain name in 2005, the Respondent cannot be held to have had any knowledge of the Complainant’s business activities at that time. The...

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