Decisión del Panel Administrativo nº D2021-4256 of WIPO Arbitration and Mediation Center, March 21, 2022 (case Matias Eduardo Araya Varela v. Jason Newby)
| Resolution Date | March 21, 2022 |
| Issuing Organization | WIPO Arbitration and Mediation Center |
| Decision | Transfer with dissenting opinion |
| Dominio | Generic Domains |
The Complainant is Matias Eduardo Araya Varela, Chile, represented by Luis Armando Alvarez Urbina, Chile.
The Respondent is Jason Newby, Canada, represented by Law Office of Howard M. Neu, PA, United States of America (“United States”).
The disputed domain name [reimex.com] is registered with GoDaddy Online Services Cayman Islands Ltd. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2021. On December 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 20, 2021, 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 sent an email communication to the Complainant on December 30, 2021 informing the Complainant of some deficiencies in the Complaint, and inviting the Complainant to submit an amendment to the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on December 30, 2021.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 4, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 24, 2022. The Response was filed with the Center on January 13, 2022.
The Center appointed Reyes Campello Estebaranz, James W. Dabney, and Gerald M. Levine as panelists in this matter on February 11, 2022. 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.
On February 25, 2022, the Panel issued a Panel Order (“Panel Order No. 1”) requesting the Parties to provide additional information and evidence. The Complainant was requested to provide such documents as will show any connection between himself and any registrant or user of [reimex.com] prior to 2018; and the Respondent was requested to provide such documents as will show the results of his investigation, if any, of the first and third Google search results listed in Exhibit A to the response. The Parties were given a common deadline to provide their response to Panel Order No. 1, by March 1, 2022, and the Parties provided their respective responses within the indicated deadline.
On March 4, 2022, the Respondent sent an additional unsolicited supplemental communication to the Center, providing various observations regarding the Complainant’s response to Panel Order No. 1. On March 7, 2022, the Complainant sent an email communication to the Center indicating that the Respondent had not provided the information requested in Panel Order No. 1. On March 8, 2022, the Complainant sent an additional unsolicited communication to the Center responding to the Complainant’s additional allegations.
The Complainant is a Chilean individual operating a business that provides various services in the field of agricultural product import-export, including credit information services in the agricultural field. The Complainant’s business is conducted exclusively online, providing an under subscription online platform for agro-industry players, under the trademark REIMEX. The Complainant’s platform allows its users to network and share experiences in their respective businesses, including a worldwide directory of companies in the agro-industry sector, as well as commercial credit information and reliability report services regarding these companies. The Complainant’s platform aims to promote trade of agricultural products globally, helping its users in their decision-making process regarding exports and imports worldwide to reduce their commercial risk. The Panel under its general powers, articulated, inter alia, in paragraph 10 of the Rules, has consulted the Complainant’s website “www.reimex.cl”.
The Complainant owns trademark registrations for its REIMEX trademark, including Chilean Trademark Registration No. 1255780, REIMEX, figurative, registered on August 7, 2017, in Classes 35 and 36; and Chilean Trademark Registration No. 1350680, REIMEX, figurative, registered on July 29, 2021, in Classes 35 and 36, (collectively the “REIMEX mark”).
The Complainant further owns various domain names comprising its REIMEX mark, including [reimex.cl] (registered on October 24, 2003) and [reimexworld.com] (registered on May 3, 2021), which resolve to its corporate website, in the Spanish and English languages, where the REIMEX mark is featured and used.
The disputed domain name was initially registered on October 4, 2003, and, per the Response, it was acquired by the Respondent on November 2018. The disputed domain name resolves to a landing page, which indicates that it “may be for sale” including a contact form for more information.
Between October 17, 2021 and October 26, 2021, the Parties exchanged various email communications regarding the possible transfer of the disputed domain name.
Key contentions of the Complaint may be summarized as follows:
The abusive registration of the disputed domain name obstructs the Complainant’s business and the use of its trademarks online.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not use the disputed domain name for commercial purposes. The Respondent’s only purpose is to sell the disputed domain name to a known prior user thereof.
The disputed domain name was registered and is being used in bad faith. The disputed domain name was registered or acquired mainly for the purpose of selling, renting or transferring its registration, to the Complainant (owner of the REIMEX mark) or to another prior user thereof, and it was offered for sale for the sum of USD 28,000, which exceeds its out-of-pocket registration costs, as corroborated by an exchange of emails between the Parties.
The Complainant request the transfer of the disputed domain name.
In response to Panel Order No. 1, the Complainant’s allegations may be summarized as follows:
The Complainant provides additional evidence regarding his ownership of the disputed domain name prior to 2018. This evidence includes an invoice for the renewal of the disputed domain name in 2012, various publications related to the launch of his platform under the disputed domain name in 2006, and evidence of his trademark registrations, including an additional recent registration for the REIMEX mark in China.
The Complainant further provides additional information and evidence in support of his allegations in connection to the bad faith registration and use of the disputed domain name. The Respondent’s usual practice is to acquire domain names not renewed by their respective owners, with the aim of selling them to the legitimate corresponding trademark owners, taking advantage of acquiring them due to their expiration dates and selling them at high costs. The Respondent acted with knowledge of the Complainant’s prior rights, in order to take advantage of its existing brand, which existed in the market at the time the Respondent acquired the disputed domain name, with the purpose of forcing the Complainant to purchase the disputed domain name. The Complainant provides an extract of a list of domain names owned by the Respondent (around 20,000), and a copy of a publication referring of the selling of another domain name to a third party by the Respondent that the Complainant considers a similar case.
The Complainant admits that he does not have any trademark registration in the United States or in Canada, but contends that his Chilean and Chinese trademark registrations should suffice under the Policy.
In various subsequent additional unsolicited communications, the Complainant alleges that the Respondent has not responded to the Panel Order No. 1. The Complainant has carried out business under the REIMEX mark with the disputed domain name. The Respondent acquired the disputed domain name with no intention to use it, but to sell it at a high price to the Complainant or another prior user thereof.
Key contentions of the Response may be summarized as follows:
Selling domain names is the Respondent’s primary source of income. The Respondent acquired the disputed domain name in a “Snapnames auction in November, 2018”. The Respondent is a Canadian resident, so he searched the Canadian as well as the United States trademark databases for possible trademarks for the word “reimex”, finding none. The Respondent asserts that he was unaware of the Complainant’s trademarks when he acquired the disputed domain name; he “made a thorough search of Google to determine if there was a market for the name”; and he “found that a number of companies around the world were using the word ‘reimex’ for their corporate names or products” (six according to the annexed evidence of record). The Respondent included a “domain may be for sale” form in the disputed domain name, doing only “incoming sales”, but never contacted the Complainant.
Over 3 years after the acquisition of the disputed domain...
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