WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Gaseosas Posada Tobón S.A. v. Fundacion Private Whois / PPA Media Services, Ryan G Foo

Case No. D2013-0501

1. The Parties

The Complainant is Gaseosas Posada Tobón S.A. of Medellin, Antioquia, Colombia, represented by Cavelier Abogados, Colombia.

The Respondent is Fundacion Private Whois of Panama, Panama / PPA Media Services, Ryan G Foo of Santiago, Chile.

2. The Domain Name and Registrar

The disputed domain name <ligapostobom.com> is registered with Internet.bs Corp. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 12, 2013. On March 13, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 18, 2013, 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 March 18, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Center furthermore sent a notification that the Complaint was administratively deficient. The Complainant filed an amended Complaint on March 19, 2013.

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”).

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 March 28, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 17, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 18, 2013.

The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on April 30, 2013. 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

The Complainant, a beverage company, filed evidence of the following trademark registrations owned by said Complainant:

The Panel found the following trademark registrations owned by the Complainant in Colombia, among others:

Since 2010, the Complainant has been the official sponsor of the Colombian Football League. As a result of the Complainant’s sponsorship, Colombia’s main Football League is known as “La Liga Postobón” (in English, “The Postobón League”).

The disputed domain name <ligapostobom.com> was registered on January 21, 2010.

5. Parties’ Contentions

A. Complainant

The Complainant argued the following:

Identical or Confusingly Similar:

That the disputed domain name is identical to the Complainant’s trademark LIGA POSTOBON, being that the Respondent employs a minor misspelling of the Complainant’s trademark to take bad faith advantage of spelling errors made by Internet users.

That the only difference between the disputed domain name and the Complainant’s trademark is the final letter “m” in <ligapostobom.com>.

That the gTLD “.com” is not relevant in determining confusing similarity.

Rights or Legitimate Interests:

That to the best of the Complainant’s knowledge, the Respondent is not known by the name “ligapostobom”.

That the Respondent has no authorization to use the LIGA POSTOBON trademark in connection with the disputed domain name, nor is the Respondent an agent or licensee of the Complainant.

That the Respondent directs Internet users to a directory website which is a pay-per-click (PPC) featuring Google Ads links to providers of sport related services which compete directly with the Complainant’s business.

Registered and Used in Bad Faith

That the Respondent uses the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the Complainant’s trademark.

That the Respondent’s intention is to create a false impression of an association with the Complainant’s trademark.

That the Respondent’s website has no content at all other than to show a PPC website containing commercial links via Google Ads from which the Respondent is making a profit at the expense of the value of the trademark LIGA POSTOBON.

That the Respondent knew or should have known of the use of the trademark prior to registering the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant is requested to prove that each of the three following elements is satisfied:

(i) The disputed 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 disputed domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

As the Respondent has failed to submit a Response to the Complainant’s contentions, the Panel may choose to accept as true all of the reasonable allegations of the Complaint (see Encyclopædia Britannica, Inc. v. null John Zuccarini, Country Walk, WIPO Case No. D2002-0487).

A. Identical or Confusingly Similar

The Complainant is the owner of several LIGA POSTOBON trademarks. The disputed domain name is confusingly similar to the Complainant’s trademarks. The only difference between the disputed domain name and the Complainant’s trademark is one letter “m”, instead of a letter “n”. This is clearly a typosquatting case where the difference consisting of one letter does not distinguish the disputed domain name from the Complainant’s trademark, phonetically or visually. The substitution of the letter “n” for the letter “m” is a purposeful misspelling mistake. (See Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775; Fuji Photo Film U.S.A., Inc. v. LaPorte Holdings, WIPO Case No. D2004-0971; Humana Inc. v. Cayman Trademark Trust, WIPO Case No. D2006-0073; Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043; Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator, WIPO Case No. D2008-1302).

The disputed domain name is also confusingly similar to the trademarks POSTOBON owned by the Complainant, the only differences being the exchange of a letter “m”, instead of a letter “n” in “postobon”, and the addition of the term “liga”. Considering that the term “liga” means literally “league”, it is clear that the disputed domain name has a close similarity with said trademarks, and that said similarity generates a risk of confusion among Internet users. Accordingly, the Panel finds that the disputed domain name <ligapostobom.com> is confusingly similar to the trademark POSTOBON.

The addition of the gTLD “.com” is irrelevant for the purposes of this analysis, as it does not add any distinctiveness to the disputed domain name (see Telecom Personal, S.A., v. NAMEZERO.COM, Inc., WIPO Case No. D2001-0015).

For all the above reasons, the disputed domain name is confusingly similar to the Complainant’s trademarks LIGA POSTOBON and POSTOBON. The first requirement of the Policy is fulfilled.

B. Rights or Legitimate Interests

The following are examples of circumstances where a respondent may have rights or legitimate interests in a disputed domain name:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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. (Policy, Paragraph 4(c)).

The Respondent has not submitted any evidence of use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.

Since the Respondent did not file a Response to the Complaint, there is no evidence on the record suggesting that the Respondent has been commonly known as “ligapostobom”. The Complainant has proven to hold several trademarks LIGA POSTOBON, and to be the official sponsor of the “Liga Postobón” professional Football League of Colombia. The Panel has found several POSTOBON trademarks which seniority gives clear rights to the Complainant.

The Respondent has not submitted evidence to show that it is linked to or associated with the Complainant or its business in any matter, nor is it authorized to use the Complainant’s trademarks or the disputed domain name.

The disputed domain name has resolved to a parking page, and to a website with links to sport-related services which compete directly with the Colombian Football League sponsored by the Complainant. Both activities constitute commercial, bad faith conduct, with the intention to misleadingly divert consumers for commercial gain. (See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267; Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415; Legacy Health System v. Nijat Hassanov, WIPO Case No. D20081708; Mpire Corporation v. Michael Frey, WIPO Case No. D2009-0258; Compart AG v. Compart.com / Vertical Axis, Inc., WIPO Case No. D2009-0462; Donald J. Trump v. Mediaking LLC d/b/a Mediaking Corporation and Aaftek Domain Corp., WIPO Case No. D2010-1404; Paris Hilton v. Deepak Kumar, WIPO Case No. D2010-1364; Lardi Ltd v. Belize Domain WHOIS Service Lt, WIPO Case No. D2010-1437; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574.)

This Panel finds no rights or legitimate interests on the side of the Respondent. The second requirement of the Policy is fulfilled.

C. Registered and Used in Bad Faith

According to Paragraph 4(b) of the Policy, the following circumstances shall be evidence of registration and use in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name 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 website 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 website or location or of a product or service on your website or location.

The Complainant has proven that the Respondent has caused the disputed domain name to resolve to a PPC site featuring commercial links to sport-related services in competition with the Colombian Football League sponsored by the Complainant, the Liga Postobón itself, and other sites. Considering that “La Liga Postobón” is the official name of the Colombian professional Football League, it is clear that this is a scheme to profit from typos committed by Internet users who are looking for the Liga Postobón professional league sponsored by the Complainant.

Therefore, the Panel finds that the Respondent registered and has used the disputed domain name with the intention to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of the website to which the disputed domain name resolves. This falls within paragraph 4(b)(iv) of the Policy. See, e.g., Alpine Entertainment Group, Inc. v. Walter Alvarez, WIPO Case No. D2007-1082; Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267; Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415 and Owens Corning v. NA, WIPO Case No. D2007-1143.

The Panel finds that the Respondent registered and used the disputed domain name in bad faith.

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 <ligapostobom.com> be transferred to the Complainant.

Kiyoshi Tsuru
Sole Panelist
Date: May 14, 2013