WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BBVA Bancomer Servicios, S.A., Institución de Banca Múltiple, Grupo Financiero BBVA Bancomer, División Fiduciaria, en su carácter de fiduciaria del fideicomiso identificado en sus registros como Fideicomiso de Turismo de Puerto Vallarta (Fideicomiso No. 41384-9 (Tourism Trust for Puerto Vallarta))

v.

Proinco Internacional, S.A. de C.V. and Pablo Héctor González Ortega

Case No. D2004-0209

1. The Parties

The Complainant is BBVA Bancomer Servicios, S.A., Institución de Banca Múltiple, Grupo Financiero BBVA Bancomer, División Fiduciaria, en su carácter de fiduciaria del fideicomiso identificado en sus registros como Fideicomiso de Turismo de Puerto Vallarta (Fideicomiso No. 41384-9 Tourism Trust for Puerto Vallarta), Jalisco, Mexico, represented by Juan Carlos Soto Rodriguez, Jalisco, Mexico.

The Respondents are Proinco Internacional, S.A. de C.V. and Pablo Héctor González Ortega, Jalisco, Mexico, represented by Alejandro Malacara Ortiz de Montellano, Jalisco, Mexico.

2. The Domain Name and Registrar

The domain name that is subject of the Complaint is <puertovallarta.net>.

The registrar is Intercosmos Media Group, Inc. dba directNIC.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2004. On March 18, 2004, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On March 18, 2004, Intercosmos Media Group d/b/a directNIC.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. On April 2, 2004, according to Rules Paragraph 4(b), the Center notified the Complainant of formal deficiencies with the Complaint, such deficiencies being: i). To prove the payment has been made; ii) To submit one original and four copies as required by the Rules, Paragraph 3(b) and supplemental rules paragraph 3(c); iii) To indicate if the dispute should be decided by a single member or a three-member Panel Rules, paragraph 3(b)(iv); iv) The language of the administrative proceeding shall be the language of the registration agreement (English); v) Complainant must submit, with respect, any challenges to a decision in the administrative proceeding canceling or transferring the domain name to the jurisdiction of the courts at the location of the domain name holders address (Rules paragraphs 1 and 3(b)(xiii)).

On April 12, 2004, the Center received by mail the amended Complaint and on April 20, 2004, the hard copy.

The Center verified that the amended 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 April 23, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was May 13, 2004. The Response was filed with the Center on May 13, 2004.

The Center appointed Martin Michaus Romero as the sole Panelist in this matter on June 4, 2004. 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 July 30, 2004, the Panel received from the Center a communication of the Complainant dated July 28, 2004, in which it is indicated that he found that in a fraudulent fashion, and without its authorization, Pablo González Ortega, acting as Proinco Internacional’s representative, reassigned the holding of the domain <visitpuertovallarta.com> to his own name. It is stated that the Complainant will legally proceed against Mr. González Ortega, and requested that this communication be accepted as supervening evidence, which consists of the registration of the domain name <visitpuertovallarta.com>, under the name of Proinco Internacional, S.A. de C.V.

The Panel admitted the communication mentioned and it is going to analyze the present resolution.

4. Factual Background

∙ Complainant is a tourism Trust for Puerto Vallarta, having its address in Jalisco, México.

∙ Complainant hired Mr. Pablo Héctor González Ortega on May 1999, to set up a website to promote Puerto Vallarta, Jalisco (municipality).

∙ The Respondents in this case are two different entities: One is Proinco Internacional, S.A. de C.V., the other is Pablo Héctor González. Mr. González appears as the owner of the domain name in dispute.

∙ None of the parties involved in this proceeding own a trademark or service mark registration in Mexico.

5. Parties Contentions

A. Complainant

Complainant claims that the domain name in dispute should be transferred to it, due to the fact that Respondents, Pablo Héctor González Ortega and Proinco Internacional, S.A. de C.V. have no legitimate rights over the domain name, considering that Complainant hired Mr. Pablo Héctor González Ortega to create and set up a website using the domain name <puertovallarta.net>.

In particular, the Complainant asserts:

a. That the Trust created by the government of Puerto Vallarta, Jalisco requires the Internet as a mean to fulfill its purposes which include among others, to promote tourism.

b. The Trust hired Mr. Pablo Héctor González Ortega to create the website. Mr. González Ortega began to perform his activities in May 1999.

c. Mr. Pablo Héctor González Ortega created and set up the website using the domain name <puertovallarta.net> that he had acquired in order to provide service to the Trust.

d. The Trust invested a substantial amount of money in order to fulfil its objectives. Considering the website’s traffic and that the advertising campaign was so successful, the Trust determined that the web page created by Mr. Pablo Héctor González Ortega shall be developed into a reservation system for people all over the world to book their accommodations through the Internet.

e. The reservation system above-mentioned should be prepared on the Internet through the website “www.puertovallarta.net”. The Trust requested Mr. Pablo Héctor González Ortega to proceed with the above, but he refused to do it, stating that in a personal level, he had already made a commitment with a Canadian enterprise, who owns the website “www.rezrez.com” to operate a reservation system through Internet.

f. In view of facts mentioned above the Trust asked Mr. Pablo Héctor González Ortega to deliver the domain name <puertovallarta.net> to them, and he refused to do that pointing out that the Canadian company had indicated as an indispensable condition to sign its agreement with him, that he would establish such system through the domain name <puertovallarta.net>. Therefore, it was not possible for Mr. Pablo Héctor González Ortega, to deliver the website or change the domain name once he had entered into the contract with the Canadian company.

g. The Trust requested that Pablo Héctor González Ortega, representative of Proinco Internacional, S.A. de C.V. provide the services for which he had been hired to administer the webpage through the domain name <puertovallarta.net>, because the webpage had achieved a leading position in regard to the number of visitors and traffic received by the web site.

h. Mr. Pablo Héctor González Ortega and Proinco offered to obtain the domain name <visitpuertovallarta.com> for the Trust, in order to promote and advertise Puerto Vallarta, as a tourist destination.

i. The Complainant considers that:

i). Pablo Héctor González Ortega and Proinco acted in bad faith, wrongfully obtaining personal benefits by using the name of Puerto Vallarta, a Municipality in the State of Jalisco, Mexico, since tourism represents the Municipality’s most important source of income.

ii). That the government of Puerto Vallarta, Jalisco has the right to use its name for tourism promotion and advertising of its city. Consequently, Proinco and Pablo Héctor González Ortega have illegally registered the name of a geographic place as a domain name, even though the law in Mexico does not grant them any right or privilege to do so and, in any event, such domain name should belong to the government of Puerto Vallarta, as legitimate representative of its community.

B. Respondents

Respondents content that the two entities did not register the domain name <puertovallarta.net> wrongfully and because it was legally registered on behalf of Pablo Héctor González Ortega and/or Proinco Internacional, S.A. de C.V., they do not agree to deliver it to the Complainant, or to any other person or institution.

In particular, the Respondents assert:

a. Complainant recognized the intellectual property rights of Respondents in the advertising agreement signed on May 1, 1999.

b. The business relationship between Complainant and Respondents started on May 1999, while the domain name was registered in 1998.

c. The advertising agreement executed by the parties set forth an industrial and intellectual property clause whereby the parties expressly agreed that the logos, trademarks, commercial names that each one would use in order to fulfill their business activities would also be their own exclusive property.

d. Based on said clause, it is stated that Respondents have owned the domain name since 1998, that Complainant recognizes that the domain name belongs to Respondents as an intellectual property right and Complainant is trying to confuse WIPO Panelists.

e. Respondents also stated that on October 15, 2001, the Officers of the Trust had a meeting and signed an agreement with Mr. Pablo Héctor González Ortega, whereby it was agreed:

i). That on May 1999, Pablo Héctor González Ortega and Proinco Internacional, S.A. de C.V., offered to obtain for the benefit of the Trust, the domain name <visitpuertovallarta.com>.

ii). Complainant agreed to sign the agreement, because Respondents have owned the domain name <puertovallarta.net>, since 1998.

iii). Respondents authorized Complainant to use his domain name <puertovallarta.net>, on temporary basis (clause number 1(a) and donate to the Complainant “www.visitpuertovallarta.com”, as it is set forth in clause 3 (a) of the agreement.

f. The substantial investment made by Complainant does not grant it any right over the industrial property rights or the domain name of Respondents. It is also stated that the investment was conducted as consequence of the advertising agreement signed with Complainant.

g. Respondents executed an agreement with a Canadian company to render hotel reservations and accommodation services because it has the right to do so and the agreement executed with Complainant is a non-exclusive advertising agreement. Therefore it is false to suggest, that the Canadian company requested the Respondents to maintain the domain name as a condition of signing an agreement, whereby the Canadian company can provide the reservation system through Internet.

h. It is false that Respondents acted in bad faith since, under Mexican law, it is legally valid to apply for a trademark brand name, or domain name with the name of Puerto Vallarta or any other municipality. Complainant mentioned the fact that there are domain names <puertovallarta.com> and <puertovallarta.com.mx> that belong to different entities, and are not official or governmental organizations.

i. Official organizations or municipalities such as Puerto Vallarta might use their name as domain name, adding “.org” or “.gob”, but private institutions use the domains “.com” or “.net”.

C. Evidence

Respondents submitted as evidence:

a. Certified copy of the statement dated October 15, 2004, regarding a meeting between the parties, in the Cancún hall of the Hotel Marriott Casa Magna in Puerto Vallarta, Jalisco, México.

b. Copy of advertising agreement signed by the parties dated May 1, 1999.

Respondents submitted to the Panel through the Center, a communication dated July 28, 2004, in which they requested the Panel that their submissions should be accepted as evidence. The submissions include the registrars WHOIS information dated July 28, 2004, which demonstrates that Respondent Pablo Héctor González Ortega acting as Proinco Internacional’s representative, reassigned the holding of the domain <visitpuerovallarta.com> to his own name.

6. Discussion and Findings

Considering the contentions and statements of the parties, the Panel considers that prior to analyzing whether or not the domain name is to be transferred to the Complainant, it should clarify the following:

a. The Panel conducted a search through the database of the Mexican Institute of Industrial Property to determine if any of the parties owns a trademark or service mark registration. The search was conducted for the term “Puerto Vallarta” in classes 35, 39 and 43.

The search revealed that none of the parties involved, i.e. Complainant and Respondents, Pablo Héctor González Ortega and Proinco Internacional own a trademark or service mark registration.

b. The domain name is not a trademark or service mark, and does not grant an industrial property right or an exclusive use, such as the registration of a trademark before the Mexican Institute of Industrial Property. The domain name is a tool (an addressing construct) used for identifying and locating computers on the Internet. Domain names provide a system of easy-to-remember Internet addresses, which can be translated by the Domain Name System (DNS) into the numeric addresses (Internet Protocol [IP] numbers) used by the network. A domain name is hierarchical and often conveys information about the type of entity using the domain name. A domain name is simply a label that represents a domain, which is a subset of the total domain name space. Domain names at the same level of the hierarchy must be unique. Thus, for example, there can be only one .COM at the top-level of the hierarchy, and only one <networksolutions.com> at the next level of the hierarchy.

A trademark is a sign that distinguishes goods or services on trade and according to the Industrial Property Law, are registered in Mexico before the Mexican Institute of Industrial Property, which should conduct a prior examination to determine the mark’s registrability.

c. Under Mexican Industrial Property Law, geographic places are not registrable as a trademark or service mark when their use as trademarks may cause confusion or error as to the origin of the products or services.

For an easy reference, section X or article 90 of the Mexican Industrial Property Law provides as follows:

ART. 90. The following cannot be registered as trademarks:

X. Maps; proper or common geographical names; or family nouns or adjectives, when they indicate the origin of products or services and may cause confusion or error as to such origin;

Despite the above, the names of geographic places are registrable as trademark if they can distinguish goods or services, but do not confuse the consumer in connection with the origin of the product. There are many trademarks registered before the Mexican Institute of Industrial Property, that consist of the name of geographic places, such as Acapulco, Cancún and Puerto Vallarta, in international classes 35, 39 and 43, that distinguish services related to the promotion of tourism.

35. Publicity and business.

39. Transporting and deposit, organization of trips.

43. Services to provide food and drinks; temporary accommodations.

The service marks cited are as follows:

d. The Panel is also aware that there have been some UDRP cases in which, a geographic name by itself, cannot function as a trademark (i.e.: Puerto Rico Tourist Co. v. Virtual Countries, Inc., WIPO Case No. D2002-1129), but in many others, the Panels have denied Complaints because of the absence of any trademark rights (Port of Helsinki v. Paragon International Projects, Ltd., WIPO Case No. D2001-0002 (refusing to transfer <portofhelsinski.com>); Teollisuuden Voima OY v. Jonno P. Vastamäki, WIPO Case No. D2001-0321; Stadt Heidelberg v. Media Factory, WIPO Case No. D2001-1500, [denying transfer of <heidelberg.net>, because Complainant failed to show trademark rights in city name Heidelberg; and Land Sachsen-Anhalt v. Skander Bouhaouala, WIPO Case No. D2002-0273 <sachsen-anhalt.com>. In the Puerto Rico Tourist Co. v. Virtual Countries, Inc., the Panel also denied Complaint as Complainant failed to prove a trademark right.

e. For the Panel it is not completely clear who is the legitimate owner of the domain name <puertovallarta.net>, due to the following:

i). According to the invitation to serve as Panelist, dated on May 28, 2004, the owner was indicated as Respondents Proinco Internacional / Gallardo Mogens, Luigi Pirandello 5620, Col. Jardines del Pedregal.

ii). Complainant indicates Proinco Luigi Pirandello 5260, Col. Vallarta Universidad Zapopan is the Respondent.

iii). The Complaint mentions that Mr. Pablo Héctor González Ortega was hired to set up a website, using the domain name <puertovallarta.net>, that he had acquired, but no specific mention is made regarding Proinco Internacional.

iv). In Respondents’s answer, it is mentioned that the domain name belongs to Proinco Internacional, S.A. de C.V. and/or Pablo Héctor González Ortega (pages 4, 6-c and 7), but it is also mentioned that the domain name belongs to Mr. Pablo Héctor González Ortega (pages 3, 7, 8, 10, 11).

v). In the advertising agreement dated May 1, 1999, executed between the Trust and Mr. Pablo Héctor González Ortega, there is no mention of the existence of a domain name.

vi). In the agreement dated October 15, 2001, it is mentioned that the domain name <puertovallarta.net> belongs to Mr. Pablo Héctor González Ortega.

According to Paragraph 4(i) of the Policy implemented by the Internet Corporation for Assigned Names and Numbers (“ICANN”) on October 24, 1999 (the “Policy”), Complainant requests the transfer of the domain name at issue in its favor.

Notwithstanding the foregoing, the Panel according to Paragraph 4(a) of the Policy, should determine if Complainant proves each of the following three elements in order to be able to submit to a mandatory administrative proceeding:

a) that the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

b) that Respondent has no rights or legitimate interest in respect of the Domain Name; and

c) that the Domain Name has been registered and used in bad faith.

I. Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights

Complainant has failed to prove that it has trademark or service mark identical or confusingly similar to the disputed domain name <puertovallarta.com>, therefore, based on the WIPO cases mentioned in point number 6.4 of this decision, Complainant has failed to prove the first of the three Policy’s requirements.

The Panel has no need to determine further issues in order to decide the case, but it will analyze the two other requirements.

II. Respondent has no legitimate interest in respect of the Domain Name

Respondent Pablo Héctor González Ortega, obtained registration of the domain name at issue on October 6, 1998, while the commercial relationship with Complainant commenced on May 1999.

Respondent Proinco Internacional, S.A. de C.V., has the following corporate purposes: to create projects, designs, to project, edit, create, print and promote, represent either locally and abroad, all type of publicity for television, movies, radio, Internet web pages and any other communication form and electronic and graphic representation or any other printed form. (public deed No. 16618, certified before Mr. Carlos Camberos Sánchez, Notary Public No. 84 for the city of Guadalajara, Jalisco, dated April 30, 2004).

Therefore, it is understandable that one of Respondents’ activities (if not the core one) may be to obtain the registration of domain names in order to develop its business.

On May 1, 1999, the Trust and Mr. Pablo González Ortega executed an Internet Promotion and Advertising Services Agreement (the “Agreement”), whereby Respondents had to carry out all necessary works, procedures and activities in order to develop a web page or a promotional website on the Internet for Puerto Vallarta, Jalisco, under the terms established by Complainant, for the year 1999.

The Agreement did not make any reference to the need to register a domain name for the Complainant, nor did it make any reference to the “temporary” use of Respondents’s domain name at issue.

Complainant argues that “Mr. Pablo González Ortega completed all necessary work in order to create and set up a website, using the domain name <puertovallarta.net> that he had acquired with the objective of presenting the Tourism Trust for Puerto Vallarta”. From the foregoing it is clear that Complainant was aware of the right of Respondents with respect to the domain name at issue at the time the parties executed the Agreement.

In view of the above, Respondents may have had a legitimate interest in the domain name <puertovallarta.net>.

III. Domain Name has been registered and used in bad faith

Respondent Pablo Héctor González Ortega argues that he was entitled to use the Domain Name at issue almost a year before the execution of the Agreement.

From the agreement dated October 15, 2001, (the “Settlement”), Complainant confirms that Respondent, Pablo Héctor González Ortega holds a legal right to the domain name at issue, and due to the fact that Complainant did not have title to any domain name, the parties agreed to use Respondents’ domain name <puertovallarta.net> on a “temporary basis”.

The Settlement requires that Respondent, Pablo Héctor González Ortega donates in favor of Oficina de Convenciones y Visitantes de Puerto Vallarta A.C., the property title of the domain name <visitpuertovallarta.com> and extend the Agreement’s term until June 30, 2002.

Complainant appeared to be aware of the existence of the relationship between Respondent, Pablo Héctor González Ortega and a third party (the company Network Solutions). In the Settlement, Respondent Pablo Héctor González Ortega agreed that no information or services in connection with the company Network Solutions shall appear at the web page “www.visitpuertovallarta.com”.

Therefore, Respondent, Pablo Héctor González Ortega, was entitled to execute further advertising services agreements with third parties.

In addition, neither the Agreement, nor the Settlement make reference to Respondent Pablo Héctor González Ortega’s obligation to create a “reservation system” using the Domain Name at issue, as Complainant affirms. No additional proof was provided by Complainant.

Regarding the communication dated July 28, 2004, submitted by Complainant as a supervening evidence, the Panel analyzed it and concluded that it refers to a domain name <visitpuertovallarta.com> that is not the disputed domain name in this proceeding. The Panel observes that Complainant will legally proceed against the Respondents through other legal means, but the communication does not prove that the Complainant complied with the requirement of paragraph 4(a) of the Policy.

From the above-mentioned it may be concluded that Complainant failed to demonstrate a trademark right, and the domain name <puertovallarta.net> has not been registered and being used in bad faith.

7. Conclusion

The Panel denies transfer to the Complainant of the domain name at issue.

Martín Michaus
Sole Panelist

Dated: August 4, 2004