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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

MercadoLibre, Inc., Ebazar.com.br Ltda. and Tech Fund S.R.L. v. Juergen Neeme and Jurgen Neeme

Case No. D2021-2651

1. The Parties

The Complainant is MercadoLibre, Inc. (“First Complainant”), United States of America (“United States”), Ebazar.com.br Ltda. (“Second Complainant”), Brazil, and Tech Fund S.R.L. (“Third Complainant”), Uruguay (jointly the “Complainants”), represented by Adams and Reese LLP, United States.

The Respondents are Juergen Neeme, Germany and Jurgen Neeme, Estonia.

2. The Domain Names and Registrars

The disputed domain names are <mercadolivre.top> registered with NameSilo, LLC and <plantillasparamercadolibre.com> registered with Dynadot, LLC (both named the “Registrars”).

3. Procedural History

The Complaint was jointly filed by the First Complainant and the Second Complainant with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2021. On August 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name <mercadolivre.top>. On August 13, 2021, the NameSilo 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 First Complainant and the Second Complainant on August 19, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting those Complainants to submit an amendment to the Complaint. An amended Complaint was filed on August 23, 2021, adding the Third Complainant and the disputed domain name <plantillasparamercadolibre.com>. The Center sent a request for registrar verification to Dynadot Registrar on August 25, 2021, and the Dynadot Registrar confirmed the registrant information on August 26, 2021. In relation to a deficiency, the Center sent a request to the Complainants on August 27, 2021, to which the Complainants responded on the same day with the second amended Complaint.

The Center verified that the Complaint, together with the first and second amended Complaints, 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 Respondents of the Complaint, and the proceedings commenced on August 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 19, 2021. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on September 20, 2021.

The Center appointed Andrew F. Christie as the sole panelist in this matter on October 7, 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, paragraph 7.

4. Factual Background

The Second Complainant, Ebazar.com.br Ltda., and the Third Complainant, Tech Fund S.R.L., are subsidiaries of the First Complainant, MercadoLibre Inc. The three Complainants collectively form the “Meli Group”. The Meli Group provides e-commerce platforms in 18 countries and employs over 13,000 people in Latin America. With over 20 years of extensive marketing, sales, and enforcement, the Meli Group operates the largest online commerce ecosystem in Latin America based on unique visitors and page views.

The Meli Group is the owner of numerous registrations of trademarks consisting of or including MERCADO LIVRE and MERCADO LIBRE. In particular, the First Complainant is the owner of Panama Trademark Registration No. 1131800 (registered on March 6, 2001) for the word trademark MERCADOLIBRE.COM, the Second Complainant is the owner of Brazil Trademark No. 908404980 (registered on July 7, 2020) for the design trademark MERCADO LIVRE, and the Third Complainant is the owner of Panama Trademark Registration No. 268151 (registered on August 23, 2018) for the design trademark MERCADO LIBRE. The Meli Group owns many domain names incorporating the strings “mercadolivre” and “mercadolibre”, including <mercadolivre.com> and <mercadolibre.com>.

The disputed domain name <mercadolivre.top> was registered on January 22, 2021, and the disputed domain name <plantillasparamercadolibre.com> was registered on January 3, 2021. The Complainants have provided screenshots of the websites resolving from the disputed domain name <mercadolivre.top> on June 1, 2021 and August 6, 2021, the former of which triggered a security alert for “Web Attack: Rig Exploit Kit Redirection 13 detected” and the latter of which displayed a message prompting visitors to install a Chrome extension. In a screenshot from August 20, 2021, the disputed domain name <plantillasparamercadolibre.com> was resolving to a website inviting users to install a “Fire Shield for Chrome”. The Complainants have also provided a screenshot, taken on August 2, 2021, of the website that is said to have resolved from the disputed domain name <mercadolivre.top>, at which it appears footwear was offered for sale.

5. Parties’ Contentions

A. Complainant

The Complainants contend that there is common control of the disputed domain names, and hence that they should be permitted to consolidate their complaints in relation to them, because: (i) the named registrant for each disputed domain name has the same surname (“Neeme”), and a first name that is nearly identical (“Juergen” and “Jurgen”); (ii) both disputed domain names use the same IP address, IP location and name servers; (iii) each disputed domain name was registered in the same month (January, 2021); (iv) both disputed domain names target trademarks owned by the Complainants (MERCADO LIVRE and MERCADO LIBRE); (v) both disputed domain names resolve to websites displaying a message prompting visitors to install a Chrome extension; and (vi) Jurgen Neeme is the registrant of many domain names that have been the subject of successful complaints under the Policy, he has a history of providing fictitious registrant information, and he regularly uses the Registrars of the disputed domain names to register his many domain names.

The Complainants contend that the disputed domain names are confusingly similar to a trademark in which they have rights because: (i) the disputed domain name <mercadolivre.top> consists of the MERCADO LIVRE trademark in its entirety followed by the generic Top-Level Domain (”gTLD”) “.top”, which increases the confusing similarity because the term “top” evokes to the public the organization and activities of the Complainant which operates the “top” (i.e. most popular) e-commerce platform in Brazil; and (ii) the disputed domain name <plantillasparamercadolibre.com> consists of the generic words “plantillas para” (which translates from Spanish as “templates for”) with the MERCADO LIBRE trademark in its entirety followed by the gTLD “.com”, and the addition of this term is presumably intended to attract sellers who are looking for templates to improve the appearance of their stores on the Mercado Libre platforms, thereby increasing the confusing similarity.

The Complainants contend that the Respondents have no rights or legitimate interests in respect of the disputed domain names because: (i) the Complainants are the exclusive owner of the MERCADO LIVRE and MERCADO LIBRE trademarks; (ii) neither “mercado livre” nor “mercado libre” is the name of either Respondent, and, to the Complainants’ knowledge, neither Respondent is or has ever been commonly known by either name; (iii) neither Respondent is or has ever been a licensee or franchisee of the Complainants, or has ever been authorized by the Complainants to register or use the MERCADO LIVRE or MERCADO LIBRE trademarks, or to apply for or use any domain name incorporating the trademarks; (iv) the Respondents are not using the disputed domain names in connection with a bona fide offering of goods or services, or in a legitimate noncommercial or fair manner, as they are apparently being used to distribute malware by prompting visitors to the websites resolving from the disputed domain names to install a Chrome extension which is linked to a fake antivirus scan page that displays false virus scan results; (v) the Respondents have also used the disputed domain name <mercadolivre.top> in connection with a website offering competing e-commerce services including clothing, shoes and accessories; and (vi) without authorization from the Complainants, no actual or contemplated bona fide or legitimate use of the disputed domain names could reasonably be claimed by the Respondents as the MERCADO LIVRE and MERCADO LIBRE trademarks were well-known at the time of registration, due to the Complainants’ extensive use and promotion of the trademarks.

The Complainants contend that the disputed domain names were registered and are being used in bad faith because: (i) given the Complainants’ use of the MERCADO LIVRE and MERCADO LIBRE trademarks and their international reputation, it is not plausible that the Respondents could have been unaware of the Complainants at the time of registration of the disputed domain names; (ii) the MERCADO LIVRE and MERCADO LIBRE trademarks have been in use for over 20 years and are universally associated with the Complainants; (iii) the Respondents’ apparent use of the disputed domain names to distribute malware constitutes additional evidence of the Respondents’ bad faith; (iv) the Respondents’ use of the disputed domain name <mercadolivre.top> to direct Internet users to a website advertising competing e-commerce services also serves as evidence of bad faith, as it disrupts the Complainants’ business; and (v) the Respondents are one and the same person, who has demonstrated a pattern of conduct indicative of bad faith registration and use of domains incorporating others’ trademarks, is a well-known cybersquatter, and has been the named respondent in at least 12 other WIPO domain name proceedings in which bad faith on the part of the respondent was found.

B. Respondent

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

6. Discussion and Findings

A. Consolidation of Complaints against Multiple Respondents

As explained in section 1.4.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), a trademark owner’s affiliate, such as a subsidiary of a parent or holding company, is considered to have rights in a trademark under the Policy for the purposes of standing to file a complaint. In this case, the First Complainant is the parent company of the Second Complainant and the Third Complainant, and the Complainants form a corporate group which acts collectively. In these circumstances, it is appropriate to treat each Complainant as having rights in the trademarks owned by the other Complainants. Accordingly, the Panel is satisfied that each of the Complainants has standing to bring this Complaint.

As explained in section 4.11.2 of the WIPO Overview 3.0, in determining whether to permit a complaint that has been filed in respect of multiple domain names registered by different respondents, panels look at whether the domain names or corresponding websites are subject to common control and whether the consolidation would be fair and equitable to all parties, in addition to taking into account procedural efficiency. In this case, there is evidence which supports the conclusion that the disputed domain names are subject to common control and, further, that the named Respondents are one and the same person. This evidence is that: (i) the named registrant for each domain name has the same surname, and a first name that is nearly identical; (ii) both domain names use the same IP address, IP location and name servers; (iii) each disputed domain name was registered in the same month; (iv) both disputed domain names target trademarks owned by the Complainants; (v) both disputed domain names have been used to resolve to websites displaying the same message; and (vi) the Respondents did not deny the assertions. The Panel is satisfied that both of the disputed domain names are under common control, and that it would be fair and equitable to all parties to permit this Complaint to proceed in relation to both of the disputed domain names.

Accordingly, the Panel permits this Complaint to proceed in the form in which it was filed.

B. Identical or Confusingly Similar

Once the gTLD “.top” is ignored (which is appropriate in this case), the disputed domain name <mercadolivre.top> consists of the whole of the textual component of the Complainants’ registered design trademark MERCADO LIVRE. Accordingly, the Panel finds that the disputed domain name <mercadolivre.top> is confusingly similar to a trademark in which the Complainants have rights.

Once the gTLD “.com” is ignored (which is appropriate in this case), the disputed domain name <plantillasparamercadolibre.com> consists of the whole of the textual component of the Complainants’ registered design trademark MERCADO LIBRE, preceded by the word string “plantillaspara”, which translates from the Spanish as “templates for”. The textual component of the Complainants’ trademark is clearly recognizable within the disputed domain name. The addition of the word string “plantillaspara” does not prevent a finding of confusing similarity of the disputed domain name with the Complainants’ trademark. As provided in section 1.8 of the WIPO Overview 3.0, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. Accordingly, the Panel finds that the disputed domain name <plantillasparamercadolibre.com> is confusingly similar to a trademark in which the Complainants have rights.

C. Rights or Legitimate Interests

The Respondents are not a licensee of the Complainants, are not otherwise affiliated with the Complainants, and have not been authorized by the Complainants to use their MERCADO LIVRE and MERCADO LIBRE trademarks. The Respondents have not provided any evidence that they have been commonly known by, or have made a bona fide use of, the disputed domain names, or that they have, for any other reason, rights or legitimate interests in the disputed domain names. The evidence provided by the Complainants shows that the disputed domain names were used to resolve to websites that displayed a message prompting Internet users to install a Chrome extension, most likely in an attempt to distribute malware. Given the confusing similarity of the disputed domain names to the Complainants’ trademarks and the absence of any relationship between the Respondents and the Complainants, such uses of the disputed domain names are neither bona fide uses nor legitimate noncommercial or fair uses. The Complainants have put forward a prima facie case that the Respondents lack rights or legitimate interests in the disputed domain names, and the Respondents have not rebutted this. Accordingly, the Panel finds that the Respondents have no rights or legitimate interests in the disputed domain names.

D. Registered and Used in Bad Faith

The disputed domain names were registered many years after the Complainants first began using their MERCADO LIVRE and MERCADO LIBRE trademarks. It is inconceivable that the Respondents registered the disputed domain names ignorant of the existence of the Complainants’ trademarks, given that the disputed domain name <mercadolivre.top> consists entirely of the textual component of the Complainants’ design trademark, and the disputed domain name <plantillasparamercadolibre.com> consists of the textual component of the Complainants’ MERCADO LIBRE design trademark preceded by the word string “plantillaspara”. Furthermore, the evidence on the record provided by the Complainants indicates that the Respondents have used the disputed domain names in an apparent attempt to encourage Internet users to install malware. Accordingly, the Panel finds that the disputed domain names have been registered and are being used in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, and the express request of the Complainants, the Panel orders that the disputed domain names <mercadolivre.top> and <plantillasparamercadolibre.com> be transferred to the First Complainant, MercadoLibre, Inc.

Andrew F. Christie
Sole Panelist
Date: October 21, 2021

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