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