The Complainant is Mercado Libre, Inc., Argentina, Mercado Libre S.R.L., Argentina, Mercado Libre Chile, Ltda., Chile, Mercado Libre, S. de R. L. C.V., Mexico, Mercado Libre Venezuela, S.R.L., Venezuela, Ebazar.com.br, Ltda., Brasil, and Tech Fund, S.R.L., Uruguay, represented by Marval O´Farrell & Mairal, Argentina.
The Respondent is Nelio Menezes, Brazil.
The disputed domain name <mercadopago.store> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2021. On May 31, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 23, 2021, 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 June 24, 2021.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 21, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 22, 2021.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on August 13, 2021. 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.
The Complainant Mercado Libre, together with its subsidiaries, is a large e-commerce ecosystem in Latin America, chosen by more than 320 million users to advertise, sell, buy, and send their goods and services over the Internet. Mercado Pago is an important product/service in Latin America for digital payments, and for sending and receiving money. Mercado Pago is available in Argentina, Brazil, Chile, Colombia, Mexico, Peru, Venezuela, and Uruguay. Mercado Pago has processed over 838 million transactions worth USD 28 billion.
The Complainant owns trademarks for MERCADO PAGO in Latin American countries such as Bolivia, Chile, Colombia, Mexico, Paraguay, Peru, Uruguay, Venezuela, and Brazil where the Respondent is situated.
The Complainant owns the several domain names from which it runs the product/service Mercado Pago.
The Domain Name was registered on February 15, 2021. At the time of filing the Complaint, and at the time of drafting the decision, the Domain Name resolved to an inactive error web page stating “Error 1000 DNS points to prohibited IP”.
The Complainant documents that it has registered trademark rights in MERCADO PAGO, and argues that the Domain Name is identical or confusingly similar to the Complainant’s trademarks, since it reproduces the Complainant’s trademark in its entirety, without any other distinctive elements.
The Complainant reminds the Panel that it is impossible to prove a negative, and makes prima facie assertions that the Respondent is not affiliated with nor authorized by the Complainant in any way. The Complainant argues that the Respondent cannot establish rights in the Domain Name, as the Respondent has not made any use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services. There is no evidence that the Respondent is commonly known by the Domain Name.
Finally, the Complainant documents that the Complaint’s trademark is well known in Latin America and submits that it is impossible that the Respondent, a Brazilian, was not aware of the Complainant and its trademark when the Respondent registered the Domain Name. The Respondent’s passive holding of the Domain Name does not prevent a finding of bad faith use, as the Complainant’s trademark MERCADO PAGO is well known, the Respondent has concealed its identity and not replied to the Complainant’s contentions, and good faith use of the Domain Name is implausible.
The Respondent did not reply to the Complainant’s contentions.
As mentioned above, the Complainant consists of different companies belonging to the same corporate group, holding trademark registrations for the trademark MERCADO PAGO in different Latin American countries. In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, and (ii) it would be equitable and procedurally efficient to permit the consolidation, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1. The Panel finds that the Complainant has a specific common grievance against the Respondent, and that it is equitable and procedurally efficient to permit the consolidation. Accordingly, the Panel accepts the request for consolidation.
The Complainant has established rights in its trademark MERCADO PAGO. The test for confusing similarity involves a comparison between the trademark and the Domain Name. In this case, the Domain Name incorporates the Complainant’s trademark in its entirety. For the purposes of assessing confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) as it is viewed as a standard registration requirement.
The Panel finds that the Domain Name is identical to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
The Complainant asserts that the Respondent is not affiliated with nor authorized by the Complainant. There is no evidence in the case file suggesting that the Respondent has any rights or legitimate interests in the Domain Name. There is no evidence that the Respondent is commonly known by the Domain Name. There is no evidence of bona fide offering of goods or services nor legitimate noncommercial or fair use in the case file. The Domain Name resolves to an error page.
The Panel finds that the Complainant has made out a prima facie showing that the Respondent has no rights or legitimate interests in the Domain Name, which has been unrebutted by the Respondent. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.
Based on the Complainant’s submissions, the Complaint’s trademark is well known in Latin America, including in Brazil where the Respondent is situated. UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See WIPO Overview 3.0, section 3.1.4.
The Panel notes that the Domain Name does not resolve to an active page. Under the circumstances of this case (the trademark is well known, the Respondent has concealed its identity and not replied to the Complainant’s contentions, and good faith use of the Domain Name is implausible), the Panel finds that the non-use of the Domain Name does not prevent a finding of bad faith under the doctrine of passive holding. See section 3.3 of the WIPO Overview 3.0.
The Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of the paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <mercadopago.store> be transferred to the Complainant, Mercado Libre, Inc.
Mathias Lilleengen
Sole Panelist
Date: August 27, 2021