WIPO decided two domain name disputes involving the sale of contact lenses in Mexico.

The complainant, David Guerra Flores, filed a complaint against the owner of pupilentes.com and pupilentes.com.mx, Carlos Perez. 

Flores claims to have come up with the idea of selling contact lenses online in Mexico sometime in 2002. He wanted to use the domain pupilentes.com for his business and owned the trademark on that domain. However, Perez also registered the domain pupilentes.com and pupilentes.com.mx in 2003 and also owned the trademark in “pupilentes.com”.  Flores registered eight other domains that are similar and directed them all to his main website pupilentes.mx. In 2011, Perez allowed his trademark to expire, which is when Flores registered the same trademark. 

The WIPO Panel found that Flores’s trademark in “pupilentes.com” and Perez’s domain name pupilentes.com are confusingly similar because they are identical. Part of Flores’s complaint rested on the idea that he had superior interests to the domain names because of his business and trademark. However, the Panel corrected him stating that to prove that the complainant should own the domain, he or she must show that the person using the website has no rights or legitimate interests in the website, not that one has superior interests. 

The Panel also found that although Perez no longer had an intellectual property interest in the domain name when he let his trademark expire, that does not mean that he has no rights or interests in the domain. Perez showed that he has continuously used the domain to sell contact lenses for years. Even though the trademark in “pupilentes.com” is owned by someone else, as long as the domain is being used to sell contact lenses legally, as in not selling counterfeit goods, Perez can continue to use the domain name.

The surprising part of this decision is that the Panel failed to find that Flores engaged in reverse domain name hijacking. A Panel will find this where the complainant had no reason to believe that his complaint would succeed, i.e. it was made in bad faith. Flores did not register his domains until 2008-2009; years after Perez had been using his domains.  However, the Panel decided that Flores could have believed that he had a legitimate right to the domains; therefore it did not find that he engaged in reverse domain name hijacking.