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José de Jesus Velázquez Jiménez v. Velazquez-Perez, CPA [2001] GENDND 908 (8 May 2001)

WIPO Arbitration and Mediation Center

1.1 Complainant: Mr. Jose de Jesus Velázquez Jiménez, of Mexican nationality, with a place of business at Blvd. Bernardo Quintana No. 138 Col. Carretas, Santiago of Querétaro, Qro. 76050 Mexico.

1.2. Respondent: Velazquez-Perez, CPA, with a place of business at 538 Carr 112 Isabela, PR 00662 United States of America.

2.1. The subject of the complaint is the domain name: < velazquez.net > .

2.2. The registrar for the domain name is Network Solutions, Inc., 505 Huntmar Park Dr. Herndon, VA 20170 United States of America.

3.1. A complaint was submitted to the WIPO Arbitration and Mediation Center (hereinafter called "the Center") on March 8, 2001 in accordance with the "Uniform Domain Name Dispute Resolution Policy" (hereinafter called "the Uniform Policy") as approved by ICANN on October 24, 1999, and in accordance with the Rules for the Uniform Policy that ICANN likewise adopted.

3.2. Copies of the complaint were sent to the Registrar on March 14, 2001 and to the respondent on March 21, 2001(by e-mail and courier).

3.3. On April 17, 2001 the Center issued a Notification of Respondent Default which was sent to the respondent by e-mail.

3.4. On April 25, 2001 WIPO appointed Luis H. de Larramendi as panelist and provided him with a complete copy of the documentation on the same date.

4.1. The complainant, Mr. Jose de Jesus Velázquez Jiménez, is the owner of Mexican trademark registrations Nos. 633729 and 637257 VELAZQUEZ & device in Classes 41 and 42 covering, respectively, education, training and entertainment services and services in medical care (word related), legal affairs (word related). Human resources consultancy: personnel recruitment and selection, psychometric examinations and/or assessments, socio-labour studies, personnel subcontracting, payroll management, needs analysis. Systems for assessing performance and development, wage determination systems, organizational climate diagnosis, wage market studies, organizational development, industrial safety consultancy. The two marks were filed on June 29, 1999 with the Instituto Mexicano de la Propiedad Industrial (hereinafter "IMPI") and August 8, 1992 was given as the date of first use.

4.2. The status of the domain name is "active", according to the registrar verification response, and it was registered on December 5, 1998.

The complainant contends:

- that he is the owner of the trademark VELAZQUEZ which is registered with IMPI and has August 8, 1992 as its date of first use;

- that the domain name in dispute is identical to the aforementioned trademark VELAZQUEZ in which he holds rights;

- that the respondent has no rights or legitimate interests in respect of the domain name that is the subject of this Complaint, because it doesn’t use <velazquez.net> for supplying internet services, nor is it the owner of the corresponding trademark registration;

- that the domain name should be considered as having been registered and used in bad faith, because the respondent bought several thousand domains and is using them for renting and sublet, including <velazquez.net>, attempting against the trademark VELAZQUEZ of the complainant;

- that the respondent attempts against the Conservation principle for Internet domain names.

Consequently, complainant petitions that the domain name in dispute be transferred to Mr. Jose de Jesus Velázquez Jiménez.

The respondent did not reply to the complaint or otherwise participate in the proceeding.

Paragraph 15 a) of the Rules instructs the Panel to render its decision on the basis of:

- the statements and documents submitted by the parties;

- the provisions of the "Uniform Policy" and of the "Rules" themselves; and

- any rules and principles of law that it deems applicable.

These premises are:

- the domain name registered by the respondent must be identical or confusingly similar to an earlier product or service mark in which the complainant holds rights;

- the respondent must have no rights or legitimate interest in respect of the domain name; and

- the domain name must have been registered and used in bad faith.

6.2.1.1. The complainant has shown that he is the owner of Mexican trademarks Nos. 633729 and 637257 VELAZQUEZ & device. As domain names cannot include figurative components, the panel finds those trademarks and the domain name in dispute to be effectively identical except, logically, for the generic element ".net".

6.2.1.2. It is to be noted, however, that while the domain name <velazquez.net> was registered on December 5, 1998, the complainant’s VELAZQUEZ marks were filed at IMPI on June 29, 1999, although the date of first use was given as August 8, 1992.

This is to say that, at the time the respondent registered the domain name <velazquez.net>, the complainant held no registration of the trademark VELAZQUEZ.

While it is true that the Center has in numerous decisions acknowledged the protection also due to unregistered or common law trademarks (for example, in decision D2000-1650), in this case the complainant has not, in the opinion of the panel, submitted adequate evidence of his rights in the trademark VELAZQUEZ prior to the date of its registration.

The first of the premises for admissibility of the complaint set out in paragraph 4a) of the Uniform Policy is thus not met. Under these circumstances, it is not necessary to examine the remainder of those premises (pursuant to decisions D2000-0008, D2000-0040 and D2000-0795, among others). Nonetheless, with a view to rendering a decision that deals with all the aspects of the case, the panel chooses also to address those requirements.

Paragraph 4 c) of the Uniform Policy sets forth, in particular but without limitation, the specific circumstances any of which, when duly proven by the respondent, demonstrates the existence of rights or legitimate interests in the domain name.

As the respondent did not reply to the complaint, we do not have its version of what its intentions were in registering the domain name in dispute or its account of the legitimate interests or rights it might have in respect of that domain name.

In various decisions it has been held that the absence of a reply from the respondent may be regarded as a tacit acceptance of the claims of the complainant when there are sufficient elements of proof or signs to provide reasonable support for that interpretation. In the instant case, however, the panel considers that there is no positive proof or sign that could allow one to maintain or even suspect that there was bad faith on the part of the respondent.

The domain name in dispute, <velazquez.net>, corresponds to the first surname (Velázquez) of the respondent. One may thus reasonably assume that the respondent registered the domain name simply so as to be identified by that surname, in line, therefore, with the provision of point (ii) of paragraph 4.c of the Uniform Policy.

The complainant has, in contrast, proved that he has a legitimate interest in the domain name in dispute. However, the Uniform Policy requires that it also be demonstrated, either directly or through a reasonable interpretation of the facts, that the respondent has no rights or legitimate interests. In this case it has not been shown that the respondent lacked any legitimate interest and in this regard it is to be noted, particularly, that the domain name corresponds to the respondent’s first surname.

In the decision given in case D2001-0041 the following important observation was made:

Having said this, it would not, in the instant case, appear possible to conclude, on the strength of those items of information in the file that have been supported with evidence, that there may have been bad faith on the part of the respondent in the registration and use of the domain name <velazquez.net>. This is said for the following reasons:

- At the time the domain name was registered, the complainant’s trademark registrations did not exist. Nor has the complainant proved that he holds rights stemming from earlier use of the trademark. Thus, under no circumstances could it be postulated that the respondent registered the domain name knowing that in doing so it was infringing the rights in a trademark registered at that time.

- The panel likewise considers that it has not been shown that the complainant’s VELAZQUEZ mark may be notorious. Nor is there any other similar circumstance that might have allowed one to deduce that the domain name could have been registered in bad faith.

- The domain name in dispute corresponds to the first surname, VELAZQUEZ, of the respondent. It is further to be noted that this surname is quite common in Latin America.

- Although the domain name in question is still without content, despite the time that has elapsed since it was registered, this panel considers that it cannot be gathered, from any of the circumstances set out in the file, that such non-use is a sign of bad faith or is due solely to the respondent’s desire to prevent the complainant from operating on the Internet under the name VELAZQUEZ.

- A point to be highlighted is that the complainant has alleged that "the respondent bought several thousand domains and are using therm for renting and sublet, including velazquez.net". However, the complainant has not supported that allegation with evidence of any kind. Furthermore, the panel has consulted the database of the registrar and can thus say that from the information contained therein it appears that the respondent only owns the domain name <velazquez.net>.

In conclusion, the file contains no evidence or circumstance that might allow one reasonably to maintain that the domain name in dispute may have been registered or used in bad faith.

The panel finds that the complainant has not proved, as required under article 4a) of the Uniform Policy, that the three premises for admissibility of the complaint have been met. The panel therefore holds that there is no cause to uphold the claim made by the complainant to the effect that the registration of the domain name <velazquez.net> should be transferred to him

Luis H. de Larramendi
Sole Panelist

Dated: May 8, 2001