Complainant is S.A.C.I. Falabella of Santiago, Chile, represented by Silva & Cia., Chile.
Respondent is Hector Ramirez of Distrito Federal, Mexico.
The disputed domain names <falabell.com.co>, <falabells.com.co>, and <falavella.com.co> are registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed in Spanish with the WIPO Arbitration and Mediation Center (the “Center”) on April 7, 2015. On April 8, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 9, 2015, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
According to information the Center received from the concerned registrar, the language of the registration agreement for the disputed domain names is English. Accordingly, Complainant was requested to provide at least one of the following: 1) satisfactory evidence of an agreement between Complainant and Respondent to the effect that the proceedings should be in Spanish; or 2) submit the Complaint translated into English; or 3) submit a request for Spanish to be the language of the administrative proceedings. Such request was to include arguments and supporting material (to the extent not already provided in the Complaint) as to why the proceedings should be conducted in Spanish. Complainant resubmitted the Complaint translated into English.
The Center verified that the Complaint together with the English translated 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 May 7, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 27, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 28, 2015.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on June 10, 2015. 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.
S.A.C.I. Falabella’s origin goes back to 1889 when it came to be the first large tailoring shop in Chile under the supervision of Salvatore Falabella. The first store outside of Santiago, Chile was constructed in Concepción in 1962. It created its credit card, CMR Falabella, in 1980. Currently S.A.C.I. Falabella is one of the most important companies in Chile. The company has expanded in South America in countries such as Argentina, Peru, and Colombia.
The company has also entered into other businesses through its affiliates: Financial services business through Banco Falabella in Chile, Peru, and Columbia in the year 2005; supermarkets (Tottus in Chile and Peru); stores for home improvement and tools (Sodimac, Sodimac Constructor y Homecenter Sodimac, with presence in Chile, Peru, Columbia, and Argentina); and clothes manufacturing and real estate investments in malls. In 1997, Falabella opened its first travel agency, Viajes Falabella. Currently, the company has more than 37 branches throughout Chile and branches in Peru, Colombia, and Argentina. In November 2006, Falabella inaugurated its first store in Colombia.
At the time of filing the Complaint the disputed domain names redirected to “www.linio.com.co”.
The disputed domain names <falabell.com.co>, <falabells.com.co>, and <falavella.com.co> were registered to Respondent on August 15, 2013, August 15, 2013, and September 25, 2013 respectively.
Complainant owns trademark registrations for FALABELLA in Colombia. Complainant states that the trademark registrations were filed before the registration of the disputed domain names.
The Complaint states that the disputed domain names are practically identical to the registered trademark of the Complaint. Complainant states also that Respondent benefits from typographical errors to attract consumers to its page who are then redirected to the webpage “www.linio.com.co”. Complainant contends that Linio is a direct competitor.
Complainant states also that the FALABELLA trademark is notorious because of its recognition, not only in its country of origin but also in all of the countries into which it has expanded, including Colombia.
The Complaint states that Respondent lacks legitimate rights and interests because the disputed domain names are being used to forward Internet users to the webpage of a third party, Linio, a company that is dedicated to the sale of products via Internet.
The Complaint states that Linio is a direct competitor of Complainant, and Respondent is taking advantage of registering disputed domain names containing typographical errors of the trademark FALABELLA. Complainant states that in the past, Linio has utilized trademarks for products on its webpage that are exclusive to Complainant and that said situation has motivated a formal claim by Complainant to the representatives of Linio.
In addition, Complainant states that Respondent has not been known by the disputed domain names.
Complainant also argues that Respondent has registered 218 domain names, a list that is attached as Annex 3 of the Complaint. According to Complainant, among those domain names, various stand out that correspond to commercial trademarks that are recognized in the market and with typographical errors, just as Respondent did with Complainant’s trademarks in the disputed domain names.
With respect to bad faith, Complainant states that Respondent registered in bad faith the disputed domain names. The Complaint argues that Respondent is the same person that registers domain names for Complainant’s competitor Linio. According to Complainant, the link between the company Linio and Respondent (Mr. Hector Ramirez) is evident. The Complaint states that Respondent, in addition to having been hired by Linio to register the official domain name for the company, <lineo.com.co>, also registered confusing combinations of Complainant’s trademarks as well as the trademarks of other well-known companies, such as: <audifonosbeats.com>, <dafigi.com>, <dafitu.com>, <dafti.com.mx>, <daftiti.com>, <dagiti.com>, <desegar.com.mx>, <desoegar.com.mx>, <despegar.com.mx>, <liio.com.mx>, <lino.com.co>, <lino.com.ve>, mercadomlibre.com>, and<mercasdolibre.com.mx>.
Complainant cites UDRP case Wal-Mart Stores, Inc. v. Héctor Ramírez, WIPO Case No. DMX2014-0026, in which the domain name was transferred to the complainant, Wal-Mart Stores, Inc., and where Respondent was also a party.
Complainant requests the transfer of the disputed domain names.
The Respondent did not reply to the Complainant’s contentions.
Under paragraph 4(a) of the Policy, to succeed, Complainant must prove that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names were registered and are being used in bad faith.
The language of the Registration Agreement for the disputed domain names is English. Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
Complainant requested that the language of the proceedings should be Spanish because the holder of the disputed domain names has registered various domain names that are related to a company headquartered in Latin America, the webpage to which communications are forwarded is located in Colombia, all of which leads to the conclusion that the language of the proceeding should be held in Spanish.
Respondent did not reply to Complainant’s allegations.
The Panel notes that there are several reasons to allow the proceedings to be conducted in Spanish, but the language of the Registration Agreement for the disputed domain names was English, there is no agreement with Respondent, and Complainant translated the Complaint into English.
Taking all these circumstances into account, this Panel decides that the proceedings will be in English.
To satisfy paragraph 4(a)(i) of the Policy, Complainant must show that the disputed domain names are identical or confusingly similar to trademarks in which Complainant has rights. As set forth above, Complainant owns various trademark registrations for the FALABELLA trademark in Colombia.
The disputed domain name <falabell.com.co> is confusingly similar to the FALABELLA trademarks, and the only difference is that Respondent has omitted the letter “a” at the end of the disputed domain name.
The disputed domain name <falabells.com.co> is confusingly similar to the FALABELLA trademarks, and the only difference is that the final letter “a” was replaced by the letter “s” in the disputed domain name.
The disputed domain name <falavella.com.co> is confusingly similar to the FALABELLA trademarks, and the only difference is that the letter “b” was replaced by the letter “v” in the disputed domain name.
It is obvious that these are all typosquatting registrations where Respondent has replaced or omitted one letter from the trademark.
Paragraph 1.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) provides that “A domain name which contains a common or obvious misspelling of a trademark normally will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name”. The disputed domain names are all misspellings of the FALABELLA trademark and thus they are confusingly similar to the trademark of Complainant.
Accordingly, the Panel finds that Complainant has rights in the FALABELLA trademarks and that the disputed domain names are confusingly similar to Complainant’s marks. Complainant has established the first element of paragraph 4(a) of the Policy.
Because it is generally difficult for a complainant to prove that a respondent does not have any rights or legitimate interests in a disputed domain name, previous UDRP panels have found it sufficient for a complainant to make a prima facie showing of its assertion where there has been no response.
Complainant has exclusive rights in the FALABELLA trademarks and has not authorized Respondent to register and use the disputed domain names. Respondent is not affiliated with or related to Complainant, nor is Respondent licensed or authorized to use the FALABELLA trademarks. Respondent is not known under the trademark. Respondent has made no showing that it has any legitimate interest in using the disputed domain names or a bona fide offering of goods or services under the mark. On the evidence before the Panel, Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain names.
The Panel is satisfied that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in the disputed domain names.
Respondent is in default, and has not provided any evidence in its own favor.
The Panel finds that the evidence in the record is sufficient to establish that Respondent has no rights or legitimate interests in the disputed domain names, and thus Complainant meets the second criterion of paragraph 4(a) of the Policy.
The Panel concludes, on the evidence submitted by Complainant, that Respondent registered and used the disputed domain names in bad faith.
Complainant’s long-standing rights in the FALABELLA trademark are uncontroverted, as is the fact that Respondent registered the disputed domain names after Complainant established its rights in the trademark.
Respondent registered the three (3) disputed domain names, which are confusingly similar to Complainant’s widely known FALABELLA trademark, around the same date, and without any rights or legitimate interests in the disputed domain names. In addition, the disputed domain names are all variations of the same FALABELLA trademark. The Panel concludes that the disputed domain names were all registered in bad faith.
With respect to bad faith use, the following elements of the case deserve to be mentioned:
- This is a classical typosquatting case. Typosquatting is the practice of misspelling an element of a mark, and has consistently been regarded as creating domain names confusingly similar to the relevant mark: see e.g. ACCOR v. Brigit Klostermann, WIPO Case No. D2005-0627.
- As noted by the panel in Go Daddy Software, Inc. v. Daniel Hadani, WIPO Case No. D2002-0568, “[t]yposquatting is virtually per se registration and use in bad faith. It is difficult to conceive of circumstances that would overcome the inference that the typosquatter ‘intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site . . . by creating a likelihood of confusion with the complainant's mark as to the source’ of the web site”.
- At the time of filing the Complaint, the disputed domain names were redirecting to the webpage of a competitor of the Complainant (“www.linio.com.co”). This is also a case of bad faith use of the disputed domain names.
- Respondent was a party to Wal-Mart Stores, Inc. v. Héctor Ramírez, WIPO Case No. DMX2014-0026, where the panelist held that Respondent acted in bad faith when he registered the domain name <wamart.com.mx>. In addition, the Panel notes more similarities in that case with the present case: that was also a typosquatting case and Respondent was also forwarding to a website used by Linio (“www.linio.com.mx”)
- The Respondent appears to have used false registration information in all disputed domain names registrations since the address is “Calle Falsa 123” (translated from Spanish into English as “123 Fake Street”) and the telephone number is “56565656”. Thus, the international courier service informed the Center that: “The delivery address and the receiver's telephone number are not correct”. This is further evidence of bad faith (see Home Director, Inc. v. HomeDirector, WIPO Case No. D2000-0111).
The Panel therefore holds that Complainant has satisfied 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 disputed domain names <falabell.com.co>, <falabells.com.co> and <falavella.com.co> be transferred to the Complainant.
Pablo A. Palazzi
Sole Panelist
Date: June 19, 2015