A Mexican company, Alibaba Alimentos Balanceados de Belleza, is a 100% Mexican company dedicated to animal nutrition with the mission of improving animal production, increasing daily weight gain, and reducing costs.
Chinese online retailer giant, Alibaba, filed a UDRP to usurp the domain Alibaba.mx from its registrant. It didn’t end too well for them as the WIPO panelist said:
“The evidence does not support a finding that the Respondent registered and used the disputed domain name in bad faith. The Respondent’s acquisition of the disputed domain name for launching its online store and the subsequent use of the name for its business suggest that the registration was not made with the intention of exploiting the Complainant’s trademark.
The Complainant has not provided sufficient evidence that the Respondent registered the disputed domain name primarily to sell it to the Complainant or its competitors, or to prevent the Complainant from using its trademark in a domain name. The previous owner’s actions, such as redirecting to Wiktionary, cannot be attributed to the Respondent.”
Final decision: Deny the transfer of the domain Alibaba.mx to the Complainant, that won 44 other UDRP filings and lost one for the first time!
The domain transfer was denied.
Copyright © 2024 DomainGang.com · All Rights Reserved.CENTER FOR ARBITRATION AND MEDIATION – DECISION OF THE PANEL OF EXPERTS
Alibaba Group Holding Limited v. Walter Alejandro Javalera Corral
Case No. DMX2024-0007
1. The Parties
The Complainant is Alibaba Group Holding Limited, United Kingdom, represented by Convey Srl, Italy.
The Respondent is Walter Alejandro Javalera Corral, Mexico.
2. The Domain Name and the Registrar
The complaint concerns the domain name alibaba.mx.
The Registry of the disputed domain name is Registry .MX (a division of NIC Mexico) (“Registry .MX”). The Registrar of the disputed domain name is NEUBOX Internet SA de CV.
3. Procedural History
The complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 20, 2024. On March 21, 2024, the Center transmitted by email to Registry .MX a request for registrar verification in connection with the disputed domain name. On March 21, 2024, Registry .MX transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the complaint.
The Center sent an email communication to the Complainant on March 25, 2024, providing the registrant and contact information disclosed by Registry .MX, and inviting the Complainant to submit an amended complaint. The Complainant filed an amended complaint on March 29, 2024.
The Center verified that the complaint together with the amended complaint satisfied the formal requirements of the Domain Name Dispute Resolution Policy for “.MX” (the “Policy” or “LDRP”), the Regulations of the Domain Name Dispute Resolution Policy for “.MX” (the “Regulations”), and the Center’s Supplemental Rules for the Policy (the “Supplemental Rules”).
In accordance with Article 4 of the Regulations, the Center formally notified the Respondent of the complaint, and the proceedings commenced on April 4, 2024. In accordance with Article 5 of the Regulations, the deadline for filing a response was set for April 24, 2024. The Response was filed on April 24, 2024.
The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on April 29, 2024, after receiving his Statement of Acceptance and Declaration of Impartiality and Independence, in compliance with Article 9 of the Regulations. The Panelist considers that his appointment is in accordance with the rules of procedure.
4. Factual Background
The Complainant is a Chinese multinational company with over twenty years of history, specializing in e-commerce and retail, internet sales, and technology products. The Complainant offers consumer-to-consumer, business-to-consumer, and business-to-business sales services worldwide, being one of the largest of its kind.
The Complainant holds multiple trademark registrations, of which the following are relevant for this proceeding:
| Trademark | Registration No. | Jurisdiction | Registration Date | Goods or Services |
|—|—|—|—|—|
| ALIBABA | 903360 | Mexico | October 10, 2005 | Class 9: Computer programs, computer equipment and peripherals; software for creating interactive websites for third parties to post information, create electronic catalogs, place and fulfill orders for products and services, etc. |
| ALIBABA | 908992 | Mexico | November 22, 2005 | Class 38: Providing multi-user access to global information networks, web services, communication services, etc. |The Complainant also owns the domain name alibaba.com, which resolves to its official website. It operates “mx.alibaba.com” as its website for Mexico.
The Respondent, on the other hand, filed a trademark application for the following:
| Trademark | Application No. | Jurisdiction | Filing Date | Goods or Services |
|—|—|—|—|—|
| ALIBABA ALIMENTOS BALANCEADOS DE BALLEZA | 2885892 | Mexico | February 1, 2023 | Class 31: Feeds; forage; pastures [livestock feed]; livestock feed; salt for livestock; maize cakes for livestock; cereal processing derivatives for livestock feed; mineral salts for cattle. |The disputed domain name was created on January 31, 2014. According to the evidence provided by the Respondent, the Respondent acquired the disputed domain name on October 30, 2023.
Currently, the disputed domain name resolves to a site displaying the design of the trademark application in Mexico, with a message: “We are working on the new website to offer you our product line. For now, please contact us at […]@alibaba.mx.”
5. Parties’ Contentions
A. Complainant
The Complainant argues that it has satisfied each element required by the Policy for the transfer of the disputed domain name. Specifically, the Complainant argues:
I. Identical or Confusingly Similar
The disputed domain name is confusingly similar to the Complainant’s ALIBABA trademark. The domain name reproduces the Complainant’s ALIBABA trademark in its entirety, and the geographic top-level domain (“ccTLD”) “.mx” does not affect the confusing similarity (citing No Zebra Network Ltda v. Baixaki.com, Inc., WIPO Case No. D2009-1071).
II. Rights or Legitimate Interests
The mere registration of the disputed domain name does not establish rights or legitimate interests (citing Pharmacia & Upjohn Company v. Moreonline, WIPO Case No. D2000-0134 and National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a chargergirls.net, WIPO Case No. D2000-0118).
The Respondent is not an authorized licensee or distributor of the Complainant and has not been authorized to use the ALIBABA trademark in the disputed domain name.
The Complainant has no information or evidence that the Respondent is commonly known by the disputed domain name.
The Respondent has not provided evidence of use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
The Respondent intended to use the Complainant’s trademarks to intentionally attract users to the website by creating confusion with the Complainant’s trademark.
The website associated with the disputed domain name displayed the Complainant’s logo as a favicon.
The website associated with the disputed domain name does not include a disclaimer indicating the absence of a relationship between the Respondent and the Complainant.
The Respondent’s use of the disputed domain name cannot be considered a bona fide offering of goods or services or a legitimate non-commercial use, demonstrating the Respondent’s lack of intention to use the disputed domain name for a legitimate purpose.
Although the burden of proof regarding rights or legitimate interests lies with the Complainant, proving the lack of rights or legitimate interests is a heavy burden. It is sufficient for the Complainant to present a prima facie case to shift the burden of proof to the Respondent (citing Anti Flirt S.A. and Mr. Jacques Amsellem v. WCVC, WIPO Case No. D2000-1553 and Audi AG v. Dr. Alireza Fahimipour, WIPO Case No. DIR2006-0003).
III. Registered and Used in Bad Faith
Given the extensive use and registration of the ALIBABA trademark by the Complainant and the provision of services and products by the Complainant in Mexico, the Respondent could not have been unaware of the trademark when registering the disputed domain name.
Considering the distinctiveness and popularity of the Complainant’s ALIBABA trademark, it is inconceivable that the Respondent was unaware of its existence when registering the disputed domain name (citing Ferrari S.p.A. v. Allen Ginsberg, WIPO Case No. D2002-0033).
The registration of a domain name with knowledge of a registered trademark constitutes evidence of bad faith (citing Belstaff S.R.L. v. jiangzheng ying, WIPO Case No. D2012-0793).
After receiving a cease and desist letter from the Complainant, the Respondent redirected the website to “www.wiktionary.org/wiki/Ali_Baba,” demonstrating awareness of the Complainant’s trademark.
The Respondent previously caused the disputed domain name to resolve to a content-free website displaying the Complainant’s logo as a favicon, indicating an intention to capitalize on the reputation of the Complainant’s trademarks.
It is difficult to conceive that the Respondent was unaware of the circumstances mentioned in the cease and desist letter sent by the Complainant’s legal representative.
The Respondent is unlikely to have acquired the transfer of the disputed domain name from its previous owner by chance.
B. Respondent
The Respondent argues that, based on the Response, the Complainant’s request should be denied. Specifically, the Respondent argues:
Alibaba, Alimentos Balanceados de Belleza is a 100% Mexican company dedicated to animal nutrition with the mission of improving animal production, increasing daily weight gain, and reducing costs.
The company has operated since January 2020 and has seen significant growth in the local market, mainly through social media promotion. The company intends to expand its market nationally through an online store to be launched in June.
I. Identical or Confusingly Similar
The Respondent does not object to the Complainant’s assertions on this point.
II. Rights or Legitimate Interests
The Complainant ignores that the Respondent filed a trademark application for AL
IBABA ALIMENTOS BALANCEADOS DE BALLEZA before the Mexican Institute of Industrial Property on February 1, 2023.
The Respondent operates under the trade name ALIBABA ALIMENTOS BALANCEADOS DE BALLEZA. The name was chosen because it was inspired by the story of Alibaba and the Forty Thieves, with the intention of creating an easy-to-remember and recognizable name.
The Respondent’s trademark application demonstrates a legitimate interest in the disputed domain name.
The disputed domain name is not used for email purposes or for reselling it to the Complainant.
The disputed domain name resolves to a landing page announcing the upcoming online store launch and provides a contact email. The Complainant’s evidence of redirection to “www.wiktionary.org/wiki/Ali_Baba” is outdated.
The Respondent has presented legitimate interests by using the disputed domain name for its planned business.
III. Registered and Used in Bad Faith
The disputed domain name was registered to launch the Respondent’s online store, where it plans to offer its product line, as described on the current website.
The previous owner of the disputed domain name was responsible for the redirection to the Wiktionary website.
The Respondent had no knowledge of the Complainant’s ALIBABA trademark until receiving the cease and desist letter. The Respondent is not involved in the Complainant’s sector and has no affiliation with the Complainant.
The Respondent did not acquire the disputed domain name to sell it to the Complainant or any of its competitors, nor to prevent the Complainant from reflecting its trademark in a domain name.
The Complainant has not proven that the Respondent registered and used the disputed domain name in bad faith. The burden of proof falls on the Complainant.
6. Discussion and Findings
To obtain a transfer of the disputed domain name, the Complainant must prove, in accordance with Article 1(a) of the Policy, that:
The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
The Respondent has no rights or legitimate interests in respect of the disputed domain name;
The disputed domain name has been registered and is being used in bad faith.I. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. The Complainant’s ALIBABA trademark is incorporated in its entirety within the disputed domain name, and the ccTLD “.mx” is generally disregarded when assessing confusing similarity.
II. Rights or Legitimate Interests
The Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent, however, has presented evidence that it operates under the name ALIBABA ALIMENTOS BALANCEADOS DE BALLEZA and filed a trademark application for the same. This evidence suggests a legitimate interest in using the disputed domain name.
The Respondent’s use of the disputed domain name for an upcoming online store related to animal nutrition indicates preparations for a bona fide offering of goods or services. The Respondent’s argument of being unaware of the Complainant’s trademark until receiving the cease and desist letter, while questionable, is plausible given the different market sectors.
III. Registered and Used in Bad Faith
The evidence does not support a finding that the Respondent registered and used the disputed domain name in bad faith. The Respondent’s acquisition of the disputed domain name for launching its online store and the subsequent use of the name for its business suggest that the registration was not made with the intention of exploiting the Complainant’s trademark.
The Complainant has not provided sufficient evidence that the Respondent registered the disputed domain name primarily to sell it to the Complainant or its competitors, or to prevent the Complainant from using its trademark in a domain name. The previous owner’s actions, such as redirecting to Wiktionary, cannot be attributed to the Respondent.
7. Decision
For the reasons stated above, in accordance with Articles 1(a) and 21 of the Policy, the Panel denies the Complainant’s request for the transfer of the disputed domain name alibaba.mx.
Kiyoshi Tsuru
Sole Panelist
Date: June 15, 2024
