MILLICOM INTERNATIONAL CELLULAR S.A. v. Comunicaciones Celulares, S.A. / Juan Figueroa
Claim Number: FA2005001897011
Complainant is MILLICOM INTERNATIONAL CELLULAR S.A. (“Complainant”), represented by Carlos Carvajal, Colombia. Respondent is Comunicaciones Celulares, S.A. / Juan Figueroa (“Respondent”), Guatemala.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tigobusiness.com>, registered with eNom, LLC.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 19, 2020; the Forum received payment on May 19, 2020.
On May 20, 2020, eNom, LLC confirmed by e-mail to the Forum that the <tigobusiness.com> domain name is registered with eNom, LLC and that Respondent is the current registrant of the name. eNom, LLC has verified that Respondent is bound by the eNom, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 22, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 11, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@tigobusiness.com. Also on May 22, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 16, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
i) Complainant, Millicom International Cellular S.A., is in the business of telecommunications, mobile, cable, satellite TV and mobile financial services. Complainant has rights in the TIGO mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,542,571, registered Dec. 9, 2008). Respondent’s <tigobusiness.com> domain name is confusingly similar to Complainant’s mark because it fully incorporates Complainant’s TIGO mark.
ii) Respondent does not have rights or legitimate interests in the disputed domain name because Respondent is neither licensed or otherwise permitted to use Complainant’s TIGO mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use because Respondent does not make any active use of the domain name.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent fails to make any active use of the disputed domain name. Additionally, Respondent was aware of Complainant’s rights in the TIGO mark before registering the disputed domain name.
B. Respondent
Respondent did not submit an official response.
1. The disputed domain name was registered on April 27, 2012.
2. Complainant has established rights in the TIGO mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,542,571, registered Dec. 9, 2008).
3. The resolving webpage of the disputed domain name displays a Spanish message stating the website is under construction.
Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the TIGO mark based upon the registration with the USPTO. Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides evidence of registration of the TIGO mark with the USPTO (e.g., Reg. No. 3,542,571, registered Dec. 9, 2008). Thus, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name is confusingly similar to Complainant’s mark because it fully incorporates Complainant’s TIGO mark. The Panel also notes that the disputed domain name adds the term “business” and a generic top-level domain (“gTLD”) to the mark. Addition of generic or descriptive terms and a gTLD to a mark is insufficient to overcome confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i). See MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). Therefore, the Panel agrees with Complainant that the disputed domain name is confusingly similar to the TIGO mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent does not have rights or legitimate interests in the disputed domain name because Respondent is not licensed or otherwise permitted to use Complainant’s TIGO mark and is not commonly known by the disputed domain name. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the domain name per Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Also, lack of authorization to use a mark may support a finding that the respondent is not commonly known by that name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record identifies the registrant of the disputed domain name as “Communicaciones Celulares S.A. / Juan Figueroa” and no information indicates that Complainant authorized Respondent to use the marks.
Additionally, Complainant argues that Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use since Respondent does not make any active use of the domain name. Inactive holding of a disputed domain name is generally not considered a bona fide offering of goods or services or legitimate noncommercial or fair use. See Nutri/System IPHC, Inc. v. Usama Ayub, FA1725806 (Forum June 5, 2017) (holding that “Respondent does not use the <nutrisystemturbo.us> domain for a bona fide offering of goods or services because the domain name resolves to a website that currently is designated as ‘under construction.’”). Here, Complainant provides a screenshot of the resolving webpage that displays a Spanish message translating to “Thank you for visiting us! Our website is under construction.” Thus, the Panel finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent registered and uses the disputed domain name in bad faith since Respondent fails to make any active use of the disputed domain name. As previously mentioned, Complainant provides a screenshot of the resolving webpage that displays a Spanish message stating the website is under construction. Complainant argues that this landing page does not qualify as an active use of the domain name.
The Panel agrees that the passive holding of a domain name does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent’s behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent’s passive holding amounts to acting in bad faith.)
The particular circumstances of this case that the Panel has considered are:
i) Complainant’s substantial advertising and promotion of Complainant’s family of marks, Complainant’s trade name, and Complainant’s domain names have created significant goodwill and consumer recognition in Guatemala, Nicaragua, Bolivia, Honduras, Paraguay and Colombia, as one of the largest telecommunications provider, including mobile services, broadcasting and information technology services. Since the inception of Complainant´s activities in Latin America, under the TIGO mark, in 2004, Complainant has become one of the main actors in the region in the telecommunications and IT services industry; and
ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name.
Taking into account all of the above, the Panel concludes that Respondent’s passive holding of the disputed domain names constitutes bad faith under Policy, paragraph 4(a)(iii) and that Respondent is using the disputed domain name in bad faith.
Complainant also argues that Respondent was aware of Complainant’s rights in the TIGO mark before registering the disputed domain name. Actual knowledge may be found from the fame of a mark and the use a respondent makes of that mark. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). Complainant argues that Respondent was aware of Complainant’s rights in the TIGO mark based upon the consumer recognition and goodwill surrounding the mark as well as Respondent’s use of the mark in its entirety in the disputed domain name. The Panel infers due to the notoriety of Complainant’s mark that Complainant had actual knowledge of Complainant’s mark before registering the disputed domain name, and thus the Panel finds bad faith registration and use under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tigobusiness.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: June 23, 2020
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