José de Jesús Velázquez Jiménez v. Velazquez-Perez, CPA

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

José

de Jesus Velázquez Jiménez v. Velazquez-Perez, CPA

Case No.

D2001-0342

1. The

Parties

1.1 Complainant: Mr.

Jose de Jesus Velázquez Jiménez, of Mexican nationality, with

a place of business at Blvd. Bernardo Quintana No. 138 Col. Carretas, Santiago

of Querétaro, Qro. 76050 Mexico.

1.2. Respondent: Velazquez-Perez,

CPA, with a place of business at 538 Carr 112 Isabela, PR 00662 United States

of America.

2. The Domain Name and

the Registrar

2.1. The subject of

the complaint is the domain name: < velazquez.net > .

2.2. The registrar for

the domain name is Network Solutions, Inc., 505 Huntmar Park Dr. Herndon, VA

20170 United States of America.

3. Procedural History

3.1. A complaint was

submitted to the WIPO Arbitration and Mediation Center (hereinafter called "the

Center") on March 8, 2001 in accordance with the "Uniform Domain Name Dispute

Resolution Policy" (hereinafter called "the Uniform Policy") as approved

by ICANN on October 24, 1999, and in accordance with the Rules for the Uniform

Policy that ICANN likewise adopted.

3.2. Copies of the complaint

were sent to the Registrar on March 14, 2001 and to the respondent on March

21, 2001(by e-mail and courier).

3.3. On April 17, 2001

the Center issued a Notification of Respondent Default which was sent to the

respondent by e-mail.

3.4. On April 25, 2001

WIPO appointed Luis H. de Larramendi as panelist and provided him with a complete

copy of the documentation on the same date.

4. Factual Background

4.1. The complainant,

Mr. Jose de Jesus Velázquez Jiménez, is the owner of Mexican trademark

registrations Nos. 633729 and 637257 VELAZQUEZ & device in Classes 41 and

42 covering, respectively, education, training and entertainment services

and services in medical care (word related), legal affairs (word related).

Human resources consultancy: personnel recruitment and selection, psychometric

examinations and/or assessments, socio-labour studies, personnel subcontracting,

payroll management, needs analysis. Systems for assessing performance and development,

wage determination systems, organizational climate diagnosis, wage market studies,

organizational development, industrial safety consultancy. The two marks

were filed on June 29, 1999 with the Instituto Mexicano de la Propiedad Industrial

(hereinafter "IMPI") and August 8, 1992 was given as the date of first

use.

4.2. The status of the

domain name is "active", according to the registrar verification response,

and it was registered on December 5, 1998.

5. Parties' Contentions

5.1. Complainant

The complainant contends:

- that he is the owner

of the trademark VELAZQUEZ which is registered with IMPI and has August 8, 1992

as its date of first use;

- that the domain name

in dispute is identical to the aforementioned trademark VELAZQUEZ in which he

holds rights;

- that the respondent

has no rights or legitimate interests in respect of the domain name that is

the subject of this Complaint, because it doesn’t use <velazquez.net>

for supplying internet services, nor is it the owner of the corresponding trademark

registration;

- that the domain name

should be considered as having been registered and used in bad faith, because

the respondent bought several thousand domains and is using them for renting

and sublet, including <velazquez.net>, attempting against the trademark

VELAZQUEZ of the complainant;

- that the respondent

attempts against the Conservation principle for Internet domain names.

Consequently, complainant

petitions that the domain name in dispute be transferred to Mr. Jose de Jesus

Velázquez Jiménez.

5.2. Respondent

The respondent did not

reply to the complaint or otherwise participate in the proceeding.

6. Discussion and Findings

6.1. Applicable Rules

Paragraph 15 a) of the

Rules instructs the Panel to render its decision on the basis of:

- the statements and

documents submitted by the parties;

- the provisions of

the "Uniform Policy" and of the "Rules" themselves; and

- any rules and principles

of law that it deems applicable.

6.2. Examination of

the Premises for Admissibility of the Complaint set out in Paragraph 4 a) of

the Uniform Policy

These premises are:

- the domain name registered

by the respondent must be identical or confusingly similar to an earlier product

or service mark in which the complainant holds rights;

- the respondent must

have no rights or legitimate interest in respect of the domain name; and

- the domain name must

have been registered and used in bad faith.

6.2.1. Analysis of the

Identity or Similarity of the Trademark and the Domain Name

6.2.1.1. The complainant

has shown that he is the owner of Mexican trademarks Nos. 633729 and 637257

VELAZQUEZ & device. As domain names cannot include figurative components,

the panel finds those trademarks and the domain name in dispute to be effectively

identical except, logically, for the generic element ".net".

6.2.1.2. It is to be

noted, however, that while the domain name <velazquez.net> was registered

on December 5, 1998, the complainant’s VELAZQUEZ marks were filed at IMPI on

June 29, 1999, although the date of first use was given as August 8, 1992.

This is to say that, at

the time the respondent registered the domain name <velazquez.net>, the

complainant held no registration of the trademark VELAZQUEZ.

While it is true that the

Center has in numerous decisions acknowledged the protection also due to unregistered

or common law trademarks (for example, in decision D2000-1650), in this case

the complainant has not, in the opinion of the panel, submitted adequate evidence

of his rights in the trademark VELAZQUEZ prior to the date of its registration.

The first of the premises

for admissibility of the complaint set out in paragraph 4a) of the Uniform Policy

is thus not met. Under these circumstances, it is not necessary to examine the

remainder of those premises (pursuant to decisions D2000-0008, D2000-0040 and

D2000-0795, among others). Nonetheless, with a view to rendering a decision

that deals with all the aspects of the case, the panel chooses also to address

those requirements.

6.2.2.Analysis of the Existence

or Non-Existence of Rights or Legitimate Interests in the Domain Name in Conflict

held by the Respondent.

Paragraph 4 c) of the Uniform

Policy sets forth, in particular but without limitation, the specific circumstances

any of which, when duly proven by the respondent, demonstrates the existence

of rights or legitimate interests in the domain name.

As the respondent did not

reply to the complaint, we do not have its version of what its intentions were

in registering the domain name in dispute or its account of the legitimate interests

or rights it might have in respect of that domain name.

In various decisions it

has been held that the absence of a reply from the respondent may be regarded

as a tacit acceptance of the claims of the complainant when there are sufficient

elements of proof or signs to provide reasonable support for that interpretation.

In the instant case, however, the panel considers that there is no positive

proof or sign that could allow one to maintain or even suspect that there was

bad faith on the part of the respondent.

The domain name in dispute,

<velazquez.net>, corresponds to the first surname (Velázquez) of

the respondent. One may thus reasonably assume that the respondent registered

the domain name simply so as to be identified by that surname, in line, therefore,

with the provision of point (ii) of paragraph 4.c of the Uniform Policy.

The complainant has, in

contrast, proved that he has a legitimate interest in the domain name in dispute.

However, the Uniform Policy requires that it also be demonstrated, either directly

or through a reasonable interpretation of the facts, that the respondent has

no rights or legitimate interests. In this case it has not been shown that the

respondent lacked any legitimate interest and in this regard it is to be noted,

particularly, that the domain name corresponds to the respondent’s first surname.

6.2.3.Possibility of bad

faith in the registration and use of the domain name.

In the decision given in

case D2001-0041 the following important observation was made:

"It is to be noted,

firstly, that it is a peculiarity of these proceedings, as compared with normal

legal proceedings aimed at enforcing the preclusive right in a trademark, that

it is a necessary condition, for the acceptance of the complaint, that the domain

name have been used and registered in bad faith. That preclusive right in the

trademark is effective even though the third party that may be using the protected

sign is in fact acting in good faith. This means that the two forms of proceedings

start out from different premises and, therefore, the outcome of these proceedings

does not prejudge other legal actions that might be brought against the party

that is supposedly infringing the preclusive right in a registered trademark."

Having said this, it would

not, in the instant case, appear possible to conclude, on the strength of those

items of information in the file that have been supported with evidence, that

there may have been bad faith on the part of the respondent in the registration

and use of the domain name <velazquez.net>. This is said for the following

reasons:

- At the time the domain

name was registered, the complainant’s trademark registrations did not exist.

Nor has the complainant proved that he holds rights stemming from earlier use

of the trademark. Thus, under no circumstances could it be postulated that the

respondent registered the domain name knowing that in doing so it was infringing

the rights in a trademark registered at that time.

- The panel likewise

considers that it has not been shown that the complainant’s VELAZQUEZ mark may

be notorious. Nor is there any other similar circumstance that might have allowed

one to deduce that the domain name could have been registered in bad faith.

- The domain name in

dispute corresponds to the first surname, VELAZQUEZ, of the respondent. It is

further to be noted that this surname is quite common in Latin America.

- Although the domain

name in question is still without content, despite the time that has elapsed

since it was registered, this panel considers that it cannot be gathered, from

any of the circumstances set out in the file, that such non-use is a sign of

bad faith or is due solely to the respondent’s desire to prevent the complainant

from operating on the Internet under the name VELAZQUEZ.

- A point to be highlighted

is that the complainant has alleged that "the respondent bought several

thousand domains and are using therm for renting and sublet, including velazquez.net".

However, the complainant has not supported that allegation with evidence of

any kind. Furthermore, the panel has consulted the database of the registrar

and can thus say that from the information contained therein it appears that

the respondent only owns the domain name <velazquez.net>.

In conclusion, the file

contains no evidence or circumstance that might allow one reasonably to maintain

that the domain name in dispute may have been registered or used in bad faith.

7. Decision

The panel finds that the

complainant has not proved, as required under article 4a) of the Uniform Policy,

that the three premises for admissibility of the complaint have been met. The

panel therefore holds that there is no cause to uphold the claim made by the

complainant to the effect that the registration of the domain name <velazquez.net>

should be transferred to him

Luis H.

de Larramendi

Sole Panelist

Dated: May

8, 2001

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