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Vitro, S.A. de C.V., Vitro Vidrio y Cristal, S.A. de C.V. and Vitro Global, S.A. v. ICG [2005] GENDND 2087 (26 December 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Vitro, S.A. de C.V., Vitro Vidrio y Cristal, S.A. de C.V. and Vitro Global, S.A. v. ICG

Case No. D2005-1150

1. The Parties

Complainants are Vitro, S.A. de C.V. and Vitro Vidrio y Cristal, S.A. de C.V., both of Nuevo León, Mexico, and Vitro Global, S.A. of Givisiez, Switzerland, represented by Sánchez-DeVanny Eseverri, S.C., Mexico.

The Respondent is ICG, London, United Kingdom of Great Britain and Northern Ireland.

2 The Domain Name and Registrar

The disputed domain name <vitromart.com> is registered with Register.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 4, 2005. On November 8, 2005, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On the same day, Register.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 11, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was December 1, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 2, 2005.

The Center appointed Roberto Bianchi as the Sole Panelist in this matter on December 12, 2005. 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.

4. Factual Background

One of the Complainants was founded in 1909 in Monterrey, Mexico. As a group Complainants are one of the main glass manufacturers and exporters in Mexico and Latin America. Through its some 40 subsidiaries in Mexico and in other countries the Complainants are major participants in the flat glass, glass container and glassware industries. Complainants have joint ventures with major world-class industry leaders like Pilkington in the United Kingdom. Complainants export to more than 70 countries. In 2004, consolidated net sales of the Vitro group were above US$ 2.2 billion.

Complainants own the VITRO mark in more than 25 countries. Vitro Vidrio y Cristal, S.A. de C.V., one of the Complainants, owns the following Mexican trademark registrations for VITROMART:

Trademark	Class	Reg. No.	Covered Goods/Services	Filing date
VITROMART	19	817,535	Construction glass; crystal glass	10-01-2003
VITROMART	35	817,536	Commercialization of construction glass	10-02-2003
VITROMART	37	817,534	Installation services for construction crystals	10-01-2003
VITROMART AND DESIGN	19	829,200	Construction glass; crystal glass	01-22-2004
VITROMART AND DESIGN	35	829,589	Commercialization of construction crystal	01-22-2004
VITROMART AND DESIGN	37	830,708	Installation services for construction crystals	01-22-2004

Complainants developed the concept of a commercialization and marketing organization reuniting some 150 distributors of Vitro products and services in around 100 Mexican cities. This chain of distribution is called “Vitromart”.

The disputed domain name <vitromart.com> was registered with Register.com on January 13, 2004. Its present registrant is ICG, Techincal [sic] Support, Marylebone, London. The domain name <rodriguezissa.com> was registered on December 25, 2002, with Melbourne IT, Ltd. d/b/a Internet Names Worldwide by Angel Ahmed Rodriguez Issa, Nuevo Leon, Mexico.

Between January 1, 2000 and March 31, 2000, Mr. Angel Ahmed Rodriguez Issa was an employee in VIDRIO PLANO, S.A. de C.V., a subsidiary of the Complainants.

As seen by this panelist on December 18, 2005, the only page posted on the “www.vitromart.com” website is in Spanish.¹ Its translation reads as follows:

“Welcome to VitroMart. We will soon offer you the highest quality in hand-made glass figures. Wait until then! Our work is exclusively hand-made, and we can offer you the best, personalized quality. We have lamps in different sizes and designs, as well as a variety of crystal figures, both decorative as functional. You’ll see that our products are first class. We also carry vitraux of the best designs. We will offer our products and services very soon. You can contact us at vitromart@yahoo.com.mx, we will gladly assist you.”

5. Parties’ Contentions

A. Complainant

Complainant basically contends the following:

The contested domain name is identical to the VITROMART mark, and also confusingly similar to the VITRO trademarks. As “mart” means the activity of buying and selling, or market, Vitromart makes specific reference to the market of Vitro.

Respondent does not own a trademark or service mark in Mexico or the United Kingdom that is identical, similar, or in any way related to the domain name or to Complainant’s trademarks. Respondent’s name is ICG. The term Vitromart is not included in any part of such name, it is not its acronym, nor does the ICG entity appear to be commonly known as Vitromart. The Respondent does not hold itself out to the public under the name Vitromart. Respondent is neither a distributor nor a licensee of Complainant, nor has otherwise been authorized by Complainants to use the VITRO or VITROMART trademarks. Respondent’s interests in the domain name cannot be said to be legitimate, considering that Angel Ahmed Rodríguez Issa, the original and present administrative, technical and billing contact for the domain name is a former employee of a subsidiary of Complainants.

There is no doubt that the Respondent’s knowledge concerning the Complainants. Respondent has taken active steps to conceal his true identity (address in Mexico). The telephone number of ICG does not exist. This is sufficient in itself for demonstrating that the Respondent was fully aware of the existence and significant reputation of Complainants. Given the Complainants’ numerous registrations for the VITRO and VITROMART trademarks, and their wide reputation, it is not possible to conceive that the original or present Respondent would have been unaware of this fact at the time of registration.

The domain name has been registered in bad faith. Under the circumstances of this case, where the Respondent’s only use of the domain name <vitromart.com> was a single web page informing the Internet users of a forthcoming offer of glass products, continuing retention and minimal use of the contested domain name by the Respondent since January of 2004, while the Respondent was fully cognizant of Complainants’ trademarks, amounts to acting in bad faith.

B. Respondent

The Respondent did not reply to the Complainants’ contentions, and is in default.

6. Discussion and Findings

A. Identical or Confusingly Similar

As seen under section 4 above, Complainant Vitro Vidrio y Cristal, S.A. de C.V. has rights in the VITROMART mark. Both the filing dates of the VITROMART mark and its use pre-date the registration of the disputed domain name. A simple comparison shows that the disputed domain name <vitromart.com> is identical to Complainant’s mark, the addition of the “.com” gTLD not being sufficient to distinguish the domain name from the mark. Therefore, the Panel finds that Complainants proved the first element of the Policy.

B. Rights or Legitimate Interests

Respondent is neither a distributor nor a licensee of the Complainants. Respondent received no authorization to register or to use the domain name, and the domain name does not appear in the “ICG” name.

According with a signed receipt, submitted as Exhibit 18 of the Complaint, between January and March of 2000 the administrative, technical and billing contact of the domain name, Mr. Angel Ahmed Rodríguez Issa, was an employee of Vidrio Plano, S.A. de C.V., a subsidiary of the Complainants. The Panel believes that the fact that Respondent registered his former employer’s trademarks as a domain name suggests that it lacks any rights or legitimate interests in the domain name.

Further, as seen under section 4 above, Respondent announces on his website that he plans to sell hand-made crystal and glass figures “very soon”. This cannot be described as a use or a demonstrable preparation to use the domain name in connection with a bona fide offering of goods or services, as provided for in Policy, paragraph 4(c)(I). The majority view of UDRP decisions is that a reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements. These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site accurately disclosing the registrant’s relationship with the trademark owner. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions at “http://arbiter.wipo.int/domains/search/overview/index.html”, especially paragraphs 2.3. In the present case, Respondent is neither a reseller of Complainants’ products nor he has disclosed any relationship with the trademark owner.

Respondent is not “making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”, as provided for in Policy, paragraph 4(c)(iii). If Respondent’s offer on the website – see section 4 above– is to be taken seriously that posting is misleadingly diverting consumers looking for Complainant’s mark and distribution chain on the Internet. Such action cannot confer any rights or legitimate interests in the domain name.

Respondent had an opportunity to contest Complainant’s allegations but failed to do so, and to present any argument in his favor. Therefore the Panel concludes that Respondent lacks any rights or legitimate interests in the domain name.

C. Registered and Used in Bad Faith

Respondent through its administrative and technical contact Mr. Rodríguez Issa, or Mr. Rodriguez Issa himself as the real Respondent, knew Complainants, their activities, trademarks and projects. As a former employee of Vidrio Plano, S.A. de C.V., a subsidiary of the Complainants, Mr. Rodríguez Issa knew or must have known perfectly well Complainants’ VITRO trademark and trade name. Complainants’ products and registered VITRO mark are well known in Mexico. Advertising of Vitro products and of the Vitromart project has been extensive in Mexico. The registration of the VITROMART mark in classes 19, 35 and 37 had already been applied for in February 2003, which is almost one year before the disputed domain name was registered. Thus, when Mr. Rodriguez Issa registered <vitromart.com> he also must have been aware of the new Vitromart distribution chain, because of his past employment relationship, or simply because he lives in the State of Nuevo León in Mexico where the Vitro group of companies do a substantial part of their business and extensively advertise their products and services.

This Panel believes that the registration of a domain name identical to one’s former employer’s mark without the authorization of the latter is evidence of registration in bad faith. Registration of a former employer’s mark as one’s domain name was considered in bad faith in Irish Institute of Purchasing and Materials Management v. Association for Purchasing and Supply, Owen O’Neill, WIPO Case No. D2001-0472, inter alia because the respondent “chose to register a domain name <iipmm.com> identical to the unregistered trademark and service mark and this was done in the knowledge that his former employer, an organization on which the Respondent had been a National Council member, had registered and was using the ccTLD domain name <iipmm.ie> as its web address since 1997”. In Irish Institute the Panel found that the circumstances were to some extent similar to those prevailing in Tourplan (e-Resolution Case DeC AF-0096) and ESAT Digifone Limited v. Michael Fitzgerald Trading as Telco-Resources, WIPO Case No. D2000-0602.

Respondent’s registration of the domain name in dispute and the <vitromart.com.mx> domain name suggests that Respondent had in mind to prevent Complainants from reflecting their VITROMART mark in a corresponding domain name.² In fact it is simply not conceivable that a former employee of Vitro could ignore that his domain name registration would prevent his former employer to register the Vitromart as a domain name under “.com”.

The consensus view of URDP Panelists is that a pattern of conduct can involve multiple UDRP cases with similar fact situations or a single case where the respondent has registered multiple domain names which are similar to known trademarks, while the registration of two domain names in the same case is not generally sufficient to show a pattern. See “WIPO Overview” at “http://arbiter.wipo.int/domains/search/overview/index.html”, especially at paragraph 3.3. However the Panel does not believe that a strictly conceived “pattern of such conduct” be required here, where Respondent –in fact a former employee of Complainants– registered the two most obvious domain names for usefully assuring Complainants an Internet presence for the VITROMART project and mark: <vitromart.com> and <vitromart.com.mx>, giving rise to two different disputes under two different –however similar– domain name dispute resolution policies.

Policy, paragraph 4(b)(ii) is not the only circumstance of bad faith in the instant case. It is clear that when Respondent registered the disputed domain name he also provided false information, taking active steps to conceal his true identity. The telephone of ICG does not exist, and the existence of a real organization under the name ICG at the address provided by Respondent on registering the domain name could not be ascertained. On December 24, 2005, this Panel visited the DHL courier’s website, and determined that according to the detailed report on the airway bill the package sent by the WIPO Center containing the hardcopy of the complaint, its annexed documents, and the commencement of proceedings could not be delivered at the provided address.. This means that the address was incorrect, or that the ING entity does not have such address.

Providing false information at the moment of registering a domain name has been held to constitute bad faith. See, among many other cases, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, “Respondent has provided false address information for the purposes of its domain name registration, in breach of the Respondent’s warranty under paragraph 2(a) of the Uniform Policy”, Quixtar Investments, Inc. v. Scott A. Smithberger and QUIXTAR-IBO, WIPO Case No. D2000-0138 (“the use of false registration details like these constitutes bad faith”, Ticketmaster Corporation v. Dmitri Prem, WIPO Case No. D2000-1550 “in the absence of explanation, the omission of significant information may be taken to amount to bad faith in securing a domain name registration”, Home Director, Inc. v. HomeDirector, WIPO Case No. D2000-0111 “this use of false contact information and the registration of other domain names that are confusingly similar to well known trademarks constitutes further evidence of bad faith”.

As to use in bad faith, if Respondent’s announcement or offer of glass and crystal products on his website is to be taken seriously, as Complainants are glass and crystal manufacturers, Respondent’s posting is clearly attempting to attract for commercial gain Internet users to Respondent’s website, by creating a likelihood of confusion with the Complainant’ mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location, which is a circumstance of bad faith use under Policy, paragraph 4(b)(iv).

The Panel concludes that the domain name was registered and is being used in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <vitromart.com> be transferred to Complainant Vitro Vidrio y Cristal, S.A. de C.V.

Roberto Bianchi
Sole Panelist

Dated: December 26, 2005

¹ The original text reads as follows: “Bienvenido a VitroMart. Muy pronto le ofreceremos la más alta calidad en figuras artesanales de vidrio. ESPÉRELO!! Nuestro trabajo es puramente artesanal y podemos ofrecerle la mejor calidad personalizada. Tenemos lámparas de diversos tamaños y diseños, así como una gran variedad de figuras de cristal tanto de decoración como funcionales. Nuestros productos son de primera, ya lo comprobará. Tenemos también vitrales del mejor diseño. Muy pronto le ofreceremos nuestros productos y servicios. Ya puede contactarnos en vitromart@yahoo.com.mx donde con gusto le atenderemos.”

² See Vitro, S.A. de C.V., Vitro Vidrio y Cristal, S.A. de C.V. y Vitro Global, S.A. v. ICG [grupo2132] (WIPO Case No. DMX2005-0006), where the present Panel decided the transfer of the <vitromart.com.mx> domain name to Complainant in application of the Policy under .MX.