Decisión del Panel Administrativo nº D2018-0535 of WIPO Arbitration and Mediation Center, June 12, 2018 (case Proeza, S.A. de C.V. v. Domain Admin)
| Resolution Date | June 12, 2018 |
| Issuing Organization | WIPO Arbitration and Mediation Center |
| Decision | Complaint denied |
| Dominio | Generic Domains |
Complainant is Proeza, S.A. de C.V. of Monterrey, Mexico, represented by Arochi & Lindner, Mexico.
Respondent is Domain Admin of Sainte Ruffine, France, self-represented.
The disputed domain name [proeza.com] (the “Domain Name”) is registered with eNom, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 9, 2018. On March 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 12, 2018, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 12, 2018. The Response was filed with the Center April 9, 2018.
The Center appointed Robert A. Badgley, David H. Bernstein and Adam Taylor as panelists in this matter on May 8, 2018. 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 May 22, 2018, the Panel issued Procedural Order No. 1, which stated:
“For a full understanding of the circumstances of the case, Complainant is requested to respond to the following questions:
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Why did Complainant omit from the Complaint the Parties’ communications in 2012 and 2013?
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Why did Complainant assert, at paragraph 5 of Section VI. B of the Complaint (“The Respondent has no rights or legitimate interests in respect of the domain name(s)”): “It must be stressed that the Respondent did not register a generic term or a non-distinctive word...”?
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What is the evidentiary basis for Complainant’s assertion, at the above-mentioned paragraph 5 of Section VI. B of the Complaint, that Respondent registered as a domain name “a recognized trademark with the clear intention to take an unfair advantage and profit out of the name ‘PROEZA’”?
Any submission from Complainant in response to this Procedural Order must be filed with the Center by 4pm Geneva time on May 29, 2018.
Any submission from Respondent in response to Complainant’s submission must be filed with the Center by 4pm Geneva time on June 5, 2018.
All communications from the Parties are to be exclusively with the Center.
In accordance with paragraph 10(c) of the Rules, the date by which the Administrative Panel is required to forward its decision to the Center has been extended to June 13, 2018.”
On May 29, 2018, Complainant submitted to the Center its response to the Panel’s Procedural Order No. 1.
On June 1, 2018, Respondent submitted to the Center his reply to Complainant’s May 29, 2018 submission, and on June 5, 2018, Respondent submitted to the Center a brief “addendum” to its reply.
Complainant is a Mexican corporation founded in 1975. According to the Complaint, the company name “Proeza” is derived from “PROmotora de Emopresas ZAno.” Complainant claims to have a presence in 16 countries, and owns and operates five business units, Metalsa, Citrofruit, Astrium, Zánitas, and Areya. These business units operate in diverse industries, including the manufacture of automotive parts, the production of fruit and fruit juices, the operation of foundries, and the provision of information technology services. Complainant’s largest subsidiaries primarily serve business-to-business markets.
One document annexed to the Complaint indicates that Complainant sells goods in France and most of Europe, and operates in Germany but not in France. This document does not, however, specify what Complainant sells in Europe, or under what trademark. As noted above, Complainant operates through five business units, and it appears from the record in this case that Complainant’s business units employ their own trademarks (such as Metalsa) to identify and distinguish the goods they sell. Given the wide diversity of commercial activity by among the various business units (e.g., auto parts and fruit juice), it is hardly surprising that the separate business units would rely principally on their industry-specific marks.
Complainant holds three registered trademarks for PROEZA, all registered in Mexico between January 1990 and March 1991. For example, Mexican Trademark Registration No. 389848 PROEZA (and device), registered on January 30, 1991. It does not appear from the record that Complainant holds any trademark registrations outside Mexico.
Complainant operates a website at [proeza.com.mx]. This domain name was registered in 1995, but it is not clear from the record when Complainant first posted content at the website.
The Domain Name was registered on November 18, 2003. The record indicates that the Domain Name resolved to a blank site until 2008. From 2008 to 2011 it resolved to a website containing sponsored pay−per-click links relating to topics such as “Flash Player Update” and “Java Update,” unrelated to Complainant’s various fields of operation (and unrelated to the word “proeza” or its meaning in any language). Since 2012, the Domain Name has resolved to an essentially blank website, with a page showing the word “Proeza,” a copyright notice, and a contact link.
As was set forth in the Response and annexes thereto (but not in the Complaint), the Parties had several communications, beginning on November 22, 2011. On November 22, 2011, a representative (“Mario”) of the IT department of Complainant’s subsidiary Metalsa sent an email to the contact email apparently supplied at the time at Respondent’s website. This email address was […]@proeza.com. Mario’s message was brief: “Hi, are you using the proeza.com domain?”
On November 23, 2011, a representative of...
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