Porrua.com, a domain name registered in 1998, has been given to a Mexican publisher via the UDRP process at the WIPO.
The Respondent alleges that it licensed the domain between 1998 and 1999 to the Complainant, and that from 2000 onward the renewal costs were paid by the Complainant. From 2004 to 2011 the domain was linked to the Complainant’s web site, and from 2011 it was forwarded to it. The Respondent further alleges that some employee must have altered fundamental functions of the domain’s account.
The UDRP case for Porrua.com is laden with “not sure” and “don’t recall” statements, and both parties produced lackluster evidence. Despite all this, the sole panelist at the WIPO ordered the domain Porrua.com to be transferred to the Complainant.
Full details follow:
Copyright © 2024 DomainGang.com · All Rights Reserved.Librería de Porrúa Hermanos y Compañia S.A. de C.V. v. Solucion Internet S.A. de C.V. / @solucion.com
Case No. D2020-01771. The Parties
The Complainant is Librería de Porrúa Hermanos y Compañia S.A. de C.V., Mexico, represented internally.
The Respondent is Solucion Internet S.A. de C.V., Mexico / @solucion.com, Mexico.1
2. The Domain Name and Registrar
The disputed domain name <porrua.com> is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 23, 2020. On January 24, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 24, 2020, the Registrar 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 January 30, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 31, 2020.
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”).
The Center sent an email communication to the parties in English and Spanish on January 30, 2020 regarding the language of the proceeding, as the Complaint has been submitted in Spanish and the language of the registration agreement for the disputed domain name is English. The Complainant submitted a request for Spanish to be the language of the proceeding on January 31, 2020. The Respondent submitted a request for English to be the language of the proceeding on February 4, 2020.
The Respondent sent several email communications from February 5, 2020 to February 28, 2020.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 10, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 1, 2020. The Response was filed with the Center on March 1, 2020.
The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on March 10, 2020. The Panel finds that it was properly constituted. 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 March 19, 2020, noting the arguments submitted by the Respondent and the use of the disputed domain name (at least until 2011 to host content under the denomination “Librería Porrúa” and at least since 2012 to redirect to the domain name <porrua.mx>), the Panel issued a Panel Order requesting the Parties to submit their arguments regarding the following points: (i) the Complainant was requested to provide an explanation regarding its use or control of the disputed domain name, or at least of the email addresses hosted on it and used for filing the Complaint; and (ii) the Respondent was requested to provide arguments and evidence to prove the date on which it acquired the disputed domain name as well as an explanation regarding the use of the disputed domain name. The Parties were given five days to submit their arguments, until March 24, 2020, and the deadline to issue the Decision was extended until Mach 31, 2020.
On March 24, 2020, the Parties submitted their responses to the Panel Order, and, due to their voluminous submissions, the deadline to issue the Decision was extended until April 3, 2020.
4. Factual Background
The Complainant is a Mexican company, founded in 1951, which operates nationally in the publishing and bookstore sector, including digital and electronic publications, through a chain of bookstores and a branches network established in various locations of Mexico (around 30 different cities), as well as an online shop, being its corporate website linked to the domain name <porrua.mx>. The Complainant further organizes several cultural events, workshops and activities, including a traveling library program through Mexico, preforms digital and personalized printing, and sells educational technology for Mexican universities. The Complainant performs these activities and commercializes its products under the mark PORRUA. The Panel has consulted the Complainant’s website under the general powers of the Panel articulated inter alia in paragraphs 10 and 12 of the Rules.
The Complainant holds registered trademark rights in the mark PORRUA, alone or in combination with other word or figurative elements, in Mexico, of which the following are sufficient representative for the present proceeding:
– Mexican Trademark No. 314465 LIBRERIA PORRUA, figurative mark, registered on June 16, 1986, in class 37;
– Mexican Trademark No. 321118 PORRUA, word mark, registered on December 17, 1986, in class 38;
– Mexican Trademark No. 714415 PORRUA.COM, figurative mark, registered on August 31, 2001, in class 16;
– Mexican Trademark No. 714416 PORRUA.COM, figurative mark, registered on August 31, 2001, in class 41;
– Mexican Trademark No. 1688046 PORRUA.COM, figurative mark, registered on October 24, 2016, in class 35;
– Mexican Trademark No. 1672842 PORRUA.COM, figurative mark, registered on September 8, 2016, in class 41.
The Complainant further owns the domain name comprising its trademark <porrua.mx>, registered on June 30, 2009, which is linked to its corporate website in connection with its products, services and activities.
The disputed domain name was registered on February 19, 1998. At the date of this decision, the disputed domain name redirects to the Complainant’s corporate website (linked to the domain name <porrua.mx>). According to screen captures from the Internet archive Wayback Machine, the disputed domain name was used at least until 2011 to host content under the denomination “Librería Porrúa” (“bookstore Porrua”), and at least since 2012 to redirect to the Complainant’s domain name <porrua.mx>. The first website stored in the mentioned Internet archive dates November 11, 1998, and includes content related to Librería Porrua with references to books catalogs and various publications available online, as well as to various activities and cultural events, indicating at the end of the site that it was developed and produced by “@ SOLUCION.COM”.
5. Parties’ Contentions
A. Complainant
1. Key contentions of the Complaint may be summarized as follows:
The Complainant has continuously operated in the market under the trademark PORRUA, since 1900 as an individual and after 1951 as a company.
The Respondent Solucion Internet, S.A. de C.V. (“Solucion Internet”) is not in the market, having been impossible to contact it in order to find an amicable solution.
The disputed domain name incorporates the trademark PORRUA, being identical or confusingly similar to the Complainant’s trademarks and the Complainant’s domain name <porrua.mx>. The Complainant’s website (under <porrua.mx>) constitutes a substantial part of its business, creating the disputed domain name a likelihood of confusion for Internet users that damages the Complainant’s business.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has no authorization to use the trademark PORRUA, has not registered any trademark containing this term and does not use the disputed domain name. The disputed domain name redirects to the Complainant’s corporate website.
The disputed domain name was registered and is being used in bad faith. The Respondent knew about the Complainant’s trademark PORRUA, registering the disputed domain name targeting this mark. The lack of use or passive holding of the disputed domain name corroborates the Respondent’s bad faith, and the fact that the Complainant does not have complete control of the disputed domain name impedes ensuring it is not being used fraudulently.
The Complainant requests the transfer of the disputed domain name.
2. Key contentions of the Complainant’s Response to the Panel Order may be summarized as follows:
In 1998, the Complainant contracted the Respondent Solucion Internet’s services to create and maintain the Complainant’s corporate website, using until 2011 the disputed domain name to host its content. The Complainant is not able to provide evidence of this relationship due to the change of its management and the time passed, providing various evidences related to the existence of the said company and its location in the same address included in the disputed domain name WhoIs information.
In 2002, after not being able to reach the website administrators, the Complainant redirected the disputed domain name to a hosting service provided by another company through the customers services of the Registrar. Since 2002 paid for the maintenance of the disputed domain name and has been paying for its renewals ever since, in order to avoid its cancellation. Evidence of these payments is provided.
The Complainant has a partial control of the disputed domain name that enables it to configure email addresses associated to it, legally using these addresses as they correspond to the Complainant’s trademark rights.
B. Respondent
1. Key contentions of the Response may be summarized as follows:
The Respondent challenges the Complainant’s trademark rights and its domain name <porrua.mx>. Some of the alleged trademark registrations are not owned by the Complainant or have expired, others were registered after the registration of the disputed domain name, and the Complainant’s domain name was registered ten years after the registration of the disputed domain name.
The term “porrua” is a location in Spain included in a high number of domain names, and a surname, being the surname of a Spanish editor, who the Respondent’s Solucion Internet founder and partner (Ana del Carmen Ferral Novoa) claimed to have met in Spain in 1997 inspiring the registration of the disputed domain name. It is not possible to provide evidences of this meeting due to the long time that has passed.
The Respondent is making a legitimate, noncommercial fair use of the disputed domain name, without intent to mislead or divert consumers or to tarnish the Complainant’s trademark. The disputed domain name is linked to a private website used to store and provide access to its documents, being its content private and hidden, as its entry point is in a second level directory and its access page requests user identification and password. About 17 years ago, the Respondent removed the index page of this website in order to avoid infringing any third parties’ rights. The redirection of the disputed domain name to the Complainant’s website is blocking this private website impeding to provide any evidence of it. The delay in bringing up the Complaint more than 20 years after the registration of the disputed domain name is a factor in determining the Respondent’s legitimate interests.
The Complainant has not proved any of the circumstances indicated in paragraph 4(b) of the Policy. The redirection of the disputed domain name to the Complainant’s official website does not harm the Complainant’s interests not causing confusion to its customers. The Complainant is benefiting from such redirection and is displaying links to the disputed domain name in its bookstores’ promotional material and its website. This redirection is only harming the Respondent, blocking the access to its private website content. The Respondent suspects that a person in its company provided the disputed domain name access codes to the Complainant.
The Respondent is not sure who completed the WhoIs related to the disputed domain name indicating “@solucion.com” as its owner. The Respondent’s founder and partner is the owner of the disputed domain name, the email address indicated in the WhoIs is hers and is still the same, but she believes she was not located in Mexico at that time. Any person having access to the control panel of the disputed domain name may have indicated the address that the Respondent uses for all her matters in Mexico, which is her mother’s address. The Respondent requests English to be the language of this proceeding, as English is the language of the registration agreement, and the Respondent’s founder and partner feels more confident in expressing herself in English, having Australian nationality. She shows an Australian passport.
The Respondent notes that the Complainant has provided in the contact information of the Complaint email addresses configured on the disputed domain name, which indicates that it has access to the control panel of the disputed domain name. The Respondent requests the Complainant to provide an email address from its own domain name for the purposes of these proceedings.
The Respondent has cited previous decisions under the Policy as well as various sections of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) that it considers supportive of its position.
The Respondent request the Panel to deny the Complainant’s request and to issue a finding of Reverse Domain Name Hijacking.
The Respondent’s founder and partner declares knowing personally all the panelists of the Center’s list of panelists located in Mexico city, providing a list of panelists that the Center may have used to appoint for this proceeding.
2. Key contentions of the Respondent’s Response to the Panel Order may be summarized as follows:
The Respondent alleges new arguments and evidences not initially included in the Response, indicating that it did not know it is possible to consult the content of the disputed domain name in different moments of the pass, and paragraph 5 (c) (i) of the Rules limits the Response to the specific allegations included in the Complaint.
In 1997, the Respondent Solucion Internet was founded in Mexico, being Ana del Carmen Ferral Novoa sole administrator and majoritarian partner. This company created interactive platforms for websites, operating under the trademark SOLUCION.COM. The Respondent’s founder and partner rented her services as an external professional to her own company, acquiring all products or services, including the disputed domain name, on her behalf as individual.
The Respondent’s founder and partner confirms registering personally the disputed domain name including the same information that its WhoIs record shows. The term “@solucion.com” identified the Respondent, and the address in Mexico city, telephone number and an email address were its office contact information in Mexico, and are still its founder and partner personal contact information in that country. Evidence related to the registration of the disputed domain name, its payment and renewals (until 2000), as well as various invoices issued by the Respondent’s founder and partner under the heading “@solucion.com” between 1997 and 2000 to different clients, among them the Respondent, are provided.
In February 1998, inspired by a Spanish editor Mr. Porrua, head of the Spanish company Ediciones Minotauro, the Respondent founder and partner registered the disputed domain name, offering him the idea of a “virtual library”, and, as he refused, immediately proposed the same idea to the Complainant contacting it in March 1998. The Complainant rented the Respondent’s virtual shop, its applications and all necessary work for scanning book covers, being the Complainant responsible of the sales, updating catalogs and paying a variable rent depending on the amount of work, applications needed and number of book covers scanned. This agreement remained approximately between March 1998 and August 1999 and the Complainant’s virtual library became famous in Mexico, but the Complainant never show any interests in the disputed domain name, preferring other domain names like <porrua.com.mx>. The Respondent provides invoices dated July and September 1998, which show in their heading the term “@solucion.com” and were issued by the Respondent to the Complainant, as well as an extract from the website linked to the disputed domain name, which shows at the end of the site the phrase “un sitio desarrollado y hospedado por @solucion.com” (“a site developed and hosted by @solucion.com”).
Since Mid-1999, the Complainant stopped paying the services provided by the Respondent. At the beginning of 2000, the Parties may have reached an agreement regarding this debt (the Respondent does not remember it), the passwords for the domain name <porrua.com.mx> (registered by the Respondent on behalf of the Complainant) had already been given to the Complainant, and the Complainant’s website, including its index, was removed from the Respondent’s server.
In March 2000, the Respondent was not sure about still paying for the renewals of the disputed domain name, so it sent its renewal notice to the Complainant. The Respondent recognizes that it has not paid for the maintenance of the disputed domain name ever since, and was not aware of the use of the disputed domain name until it was notified of this proceeding, but it kept its ownership for any future projects.
In 2004, the Respondent corroborated that its employees were hiring their services directly to various clients, suspecting now that they may have given access to the Complainant and redirected the disputed domain name to its corporate website. The Respondent provides a chart describing the use over the years of the disputed domain name and the Complainant’s domain names (<porrua.com.mx> and <porrua.mx>), since 1998. This chart shows that the disputed domain name was kept in the Respondent’s server linked to the Complainant’s website until December 2011, and since December 8, 2011 the disputed domain name as well as the domain name <porrua.com.mx> were redirected to the Complainant’s website under the domain name <porrua.mx>.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that, in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The Complainant has made the relevant assertions as required by the Policy. The Center has conducted the proceeding in accordance to the Policy and to its administrative role. The dispute is properly within the scope of the Policy and the Panel has authority to decide the dispute.
Paragraph 15(a) of the Rules provides that “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. The Panel has taken into consideration all of the evidence, annexed material and submissions provided by the Parties, and has performed some limited independent research under the general powers of the Panel articulated inter alia in paragraphs 10 and 12 of the Policy. See section 4.8 of the WIPO Overview 3.0.
A. Language of the Proceeding
Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise.
The Complaint was submitted in Spanish, requesting Spanish to be the language of the proceeding, noting that the WhoIs information of the disputed domain name shows that the Respondent is located in Mexico, which is a Spanish-speaking country.
The Respondent forwarded to the Center various communications in Spanish, including its response to the Panel Order, requesting, however, English to be the language of this proceeding, as it is the language of the registration agreement of the disputed domain name, and the Respondent’s founder and partner, representative in this proceeding, feels more confident in expressing herself in English. The Respondent’s representative indicates that she had spent more time outside Mexico than in this country during the last 20 years, having Australian nationality and showing an Australian passport.
Due to these circumstances, the Panel considers more appropriate for English to be the language of the proceeding and to render this decision in English, albeit the Panel has chosen not to request any translation of the Parties’ submissions in Spanish, in order to ensure this proceeding takes place with due expedition.
A. Identical or Confusingly SimilarIn cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered identical or confusingly similar to that mark for purposes of the Policy. See section 1.7, WIPO Overview 3.0.
The Complainant indisputably has rights in the registered trademark PORRUA. The Panel has corroborated that the Complainant’s registered trademarks are valid and held by the Complainant.
The disputed domain name incorporates the mark PORRUA in its entirety without any alteration or addition. The Complainant’s trademark is therefore directly recognizable in the disputed domain name, and the generic Top-Level Domain (gTLD) “.com” is a technical requirement, generally disregarded for the purpose of the analysis of the confusing similarity. See section 1.11, WIPO Overview 3.0. Accordingly, this Panel finds that the disputed domain name is identical to the Complainant’s mark, and the first element of the Policy under paragraph 4(a)(i) has been satisfied.
B. Rights or Legitimate Interests
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, prior UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the Respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden production of rights or legitimate interests in the disputed domain name to the Respondent, once the Complainant has made a prima facie showing indicating the absence of such rights or legitimate interests.
The Complainant has alleged the Respondent has no authorization to use the Complainant’s trademarks, has not registered any trademark containing the term “porrua” and does not use the disputed domain name, being it redirected to the Complainant’s corporate website. This effectively shifts the burden to the Respondent of producing rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides the circumstances, without limitation, for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in the disputed domain name.
The Respondent has offered two different explanations of the use of the disputed domain name. First, it indicated that the disputed domain name hosted a private website used to store its files, pointing to a hidden second level directory and requesting user identification and password, being impossible to provide evidence of this private website due to the redirection of the disputed domain name, which is blocking this site.
In its Response to the Panel Order, the Respondent indicates that, in March 1998 (after the registration of the disputed domain name), the Respondent signed a contract with the Complainant, keeping the ownership of the disputed domain name but renting its use (together with a website and various services), for hosting the Complainant’s virtual shop. This contract was in place since March 1998 until August 1999, ending in Mid-1999, and since March 2000, the Respondent sent a disputed domain name renewal notice to the Complainant, and has not paid for its maintenance ever since, not being aware of the use of the disputed domain for all these years, although it kept its ownership for any future projects. The Respondent suspects that its employees may have given access to the Complainant and/or redirected the disputed domain name to the Complainant’s website, and the delay in bring up the Complaint is a factor in determining its legitimate interests.
The Panel notes the contradictions of the Respondent. The Panel further notes that no evidence has been provided of the existence of a private website linked to the disputed domain name, and that the redirection of the disputed domain name to the Complainant’s website, took place in 2002 according to the evidence provided by the Complainant. Therefore, in a balance of probabilities, the Panel considers it is not plausible that the Respondent did not find about this redirection during the last 18 years and did not take any action against it, if it was blocking its private website, used to store its files.
The Panel further notes that the Respondent has provided two invoices issued to the Complainant in July and September 1998, as well as its constitutional deed dated October 8, 1997, invoices issued by the Respondent’s founder and partner to her own company and other invoices issued by the Respondent to third clients, all dated between 1997 and 2000. However, the Respondent has not been able to provide a copy of the alleged renting contract between the Respondent and the Complainant, not providing any evidence of the alleged agreement regarding the ownership of the disputed domain name by the Respondent or her founder and partner. The concepts included in the invoices issued to the Complainant (dated July and September 1998) only corroborate the existence of a standard service’s agreement for the creation, development and maintenance of a website.
In any case, the Panel considers remarkable the moment the Respondent indicates this agreement started, having first contacted the Complainant in March 1998, this is right after the registration of the disputed domain name (February 19, 1998). The Panel infers from this circumstance that, the Respondent had the Complainant’s trademark in mind when registering the disputed domain name and later on offering services for the creation, development and maintenance of a website. However, this is not enough to justify any rights or legitimate interests in respect of the disputed domain name, especially noting per Respondent’s contentions that the contract is no longer in force.
Apart from the use connected to the alleged contract, linked to the Complainant’s virtual shop, the Respondent has not provided any evidence of use or demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name, in connection with a Respondent’s bona fide offering of goods or services or to a legitimate noncommercial or fair use. The Respondent has recognized that since such contract or relationship with the Complainant ended (mid-1999), a disputed domain name’s renewal notice was sent to the Complainant (in 2000), not being the Respondent aware of the use of the disputed domain name or the redirection to the Complainant’s website until it knew about this proceeding. Therefore, the Respondent has recognized not using the disputed domain name (except for a claimed private website), not even paying for its renewals, since 2000, for the last twenty years.
The Respondent is not commonly known by the term “porrua”. The Respondent indicated that it registered the disputed domain name inspired by the surname of a Spanish editor, and has recognized not having any trademark rights over this term, keeping the disputed domain name, during the last 20 years, only for future projects, not providing any evidence of any of such projects. The Panel does not have any evidence of this, and the Respondent’s contact with the Complainant leads towards a different motif for the registration of the disputed domain name.
Furthermore, a core factor in assessing fair use of the disputed domain name is that it does not falsely suggest affiliation with the Complainant’s trademark. The disputed domain name incorporates the Complainant’s trademark in its entirety without any alteration or addition, being identical to the main element of the Complainant company name and its reputed trademark. Therefore, the Panel considers that there is a high risk of implied affiliation. See section 2.5, WIPO Overview 3.0.
All the above-mentioned circumstances lead the Panel to conclude that the Respondent has not rebutted the Complainant’s prima facie case, and, there is not sufficient evidence in the file to consider that the Respondent has rights or legitimate interests in the disputed domain name. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(a)(iii), requires that the Complainant establish that the disputed domain name “has been registered and is being used in bad faith”.
At the time of the disputed domain name’s registration, this Panel considers unlikely that the Respondent did not know about the PORRUA mark, and did not have it in mind. Several factors in this case lead to this conclusion.
The Respondent has indicated that it registered the disputed domain name inspired by the surname of a Spanish editor, offering the idea of a virtual shop to this person and after his rejection to the Complainant. However, the Respondent has not provided any evidence of the alleged meeting with this editor and/or any evidence of any offer made to him. Further, the Panel notes that this Spanish editor operated mainly in Spain and Argentina, being the Respondent located in Mexico at the time of the registration of the disputed domain name (established in Mexico city), and he operated under various pseudonyms (like Luis Domènech, Ricardo Gosseyn, Francisco Abelenda or simply F. A.) as well as a company called Ediciones Minotauro. The Panel, in use of the general powers articulated in the Policy, has performed various searches over the Internet.
The Panel further notes the extensive presence of the trademark PORRUA, as well as its extensive and continued use in Mexico since 1900, where the Respondent has recognized was located and operated at the time of the registration of the disputed domain name, being established and operating in Mexico city. In the same city (Mexico city), the Complainant operates since 1900 (as an individual and since 1951 as a company), having an open notorious bookstore that has become the center of its business, extended nationally to many other bookstores in around 30 different cities of Mexico. The Panel, in use of the general powers articulated in the Policy, has visited the Complainant’s website and performed various searches over the Internet.
The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”, being the Panel prepared to draw certain inferences in light of the particular facts and circumstances of the case. See section 4.2, WIPO Overview 3.0.
In the balance of probabilities, the Panels considers more likely than not that the Respondent knew about the Complainant, its bookstores and its trademark PORRUA and have it in mind when it registered the disputed domain name, targeting the Complainant’s trademark, before any contact to the Complainant. The Respondent has indicated that it contacted the Complainant on March 1998. Therefore, it contacted the Complainant right after the registration of the disputed domain name (on February 19, 1998).
Furthermore, the Respondent has confirmed the Complainant’s allegations regarding the passive holding of the disputed domain name. After an initial period, where the disputed domain name was used in connection to the renting or services’ agreement between the Parties, linked to the Complainant’s virtual shop, their relationship ended, recognizing the Respondent that it was not aware of the use of the disputed domain name, not having its control and not having paid for its renewal since 2000. The Panel considers such nonuse is similar to a passive holding, which does not prevent a finding of bad faith. See section 3.3, WIPO Overview 3.0.
The Panel further notes the inconsistencies of the Respondent’s allegations, having provided a complete different story in the Response to the one provided in its reply to the Panel Order, after noticing that the Panel had investigated the use of the disputed domain name in various moments of the past. The Respondent alleged first the existence of a private website containing its file’s archive, remaining silent about the existence of its past relationship with the Complainant, as well as about the term “@solucion.com” included in the registration of the disputed domain name information. The Respondent pretended that the term “@solucion.com” was an alteration of its email address done by somebody else after the registration of the disputed domain name, recognizing afterwards, however, that the Respondent used this term as a trademark, including it in its invoices and having registered trademark rights over it. The Respondent provided invoices an evidence of these trademarks that were still in its possession.
The Policy’s non-exhaustive list of bad faith circumstances in paragraph 4(b) includes the following:
“(i) circumstances indicating that you have registered or you have acquired the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”
Taking into account all cumulative circumstances of this case, the Panel considers that the disputed domain name was very likely registered and used, targeting the mark PORRUA, with the intention of renting or otherwise transferring the disputed domain name registration to the Complainant or to any of its competitors for valuable consideration in excess of the costs directly related to the registration of the disputed domain name, and disrupting the Complainant’s business. Originally, for obtaining a renting or services’ agreement with the Complainant that yield the Respondent considerable business returns. The two invoices provided by the Respondent show figures higher than MXN 72,000 (each).
Given the online nature of an important part of the Complainant’s business, the Panel considers that the potential use of the disputed domain name constitutes a serious threat to a core part of the Complainant’s business, and to the Internet users accessing and downloading the Complainant’s books, digital printing services and educational technology online. Further, given the nature of the disputed domain name, being identical to the Complainant’s mark PORRUA, such use by any third party may cause a likelihood of confusion as to the affiliation or association with the Complainant and its reputed trademark.
All the above-mentioned leads the Panel to conclude that the disputed domain name was registered and is being used in bad faith. Accordingly, the Panel concludes that the Complainant has met its burden of establishing that the Respondent registered and is using the disputed domain name in bad faith under the third element of the Policy.
D. Reverse Domain Name Hijacking
Paragraph 15(e) of the UDRP Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”.
The Panel considers that the Complaint and the Response to the Panel Order by the Complainant were reasonable and well-founded, being its allegations consistent and not existing any circumstance in this proceeding that may justify a finding of reverse domain hijacking. See section 4.16, WIPO Overview 3.0.
7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <porrua.com> be transferred to the Complainant.
Reyes Campello Estebaranz
Sole Panelist
Date: April 1, 20201 The Panel notes that the Response was submitted by Ana del Carmen Ferral Novoa, and that the registrant of record for the disputed domain name is @solucion.com (as confirmed by the Registrar). In view of the case file, the Panel will consider and refer to Ana del Carmen Ferral Novoa, @solucion.com, and Solucion Internet S.A. de C.V, indistinctively as the (relevant) Respondent (unless otherwise indicated when referring individually to one of them).
