Milestone Systems A/S v Camila Guzman

WIPO Case No. D2024-4461

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Milestone Systems A/S v. Camila Guzman

Case No. D2024-4461

1. The Parties

The Complainant is Milestone Systems A/S, Denmark, represented by Patrade A/S, Denmark.

The Respondent is Camila Guzman, Mexico.

2. The Domain Name and Registrar

The disputed domain name <milestoneventas.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 30, 2024. On October 30, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 30, 2024, the 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 (Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on November 4, 2024, 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 November 15, 2024.

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 November 19, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 9, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 10, 2024.

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The Center appointed Edoardo Fano as the sole panelist in this matter on December 16, 2024. 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.

The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.

Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to [the] Respondent”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a response from the Respondent.

The language of the proceeding is English, being the language of the Registration Agreement, as per paragraph 11(a) of the Rules.

4. Factual Background

The Complainant is Milestone Systems A/S, a Danish company operating in the information technology field and owning several trademark registrations for MILESTONE all over the world, among which:

- Danish Trademark Registration No. VR 2007 03029 for MILESTONE, registered on August 17, 2007;

- International Trademark Registration No. 1572446 for MILESTONE, registered on December 14, 2020, also extended to Mexico;

- European Union Trademark Registration No. 018348841 for MILESTONE, registered on

January 4, 2023;

- United States of America Trademark Registration No. 6965960 for MILESTONE, registered on January

31, 2023.

The Complainant also operates on the Internet, its main website being “

The Complainant provided evidence in support of the above.

According to the WhoIs records, the disputed domain name was registered on April 15, 2024, and it resolves to an error page. However, when the Complaint was filed, the disputed domain name resolved to a website of a self-proclaimed Mexican company “Milestone Logistics”, in which the Complainant’s trademark and logo were reproduced, and logistics services were purportedly provided.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant states that the disputed domain name is confusingly similar to its trademark
MILESTONE, as the disputed domain name wholly incorporates the Complainant’s trademark.

Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it has not been authorized by the Complainant to register the disputed domain name or to use its trademark within the disputed domain name, and it is not making either a bona fide

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offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. The
disputed domain name was used in order to advertise logistics services, resolving to a website in which the
Complainant’s trademark and logo were reproduced, and diverting consumers away from the Complainant.

The Complainant submits that the Respondent has registered the disputed domain name in bad faith, since the Complainant’s trademark MILESTONE is distinctive and well-known in the information technology field. Therefore, the Respondent targeted the Complainant’s trademark at the time of registration of the disputed domain name and the Complainant contends that the use of the disputed domain name to attract, for

commercial gain, Internet users to the Respondent’s website, creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, qualifies as bad faith registration and use.

B. Respondent

The Respondent has made no reply to the Complainant’s contentions and is in default. In reference to paragraphs 5(f) and 14 of the Rules, no exceptional circumstances explaining the default have been put forward or are apparent from the record.

A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences, in accordance with paragraph 14(b) of the Rules, may be drawn. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii)       the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii)      the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7.

Based on the available record, the Panel finds the Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.

The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

While the addition of other terms, here “ventas” (meaning “sales” in Spanish), may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

It is also well accepted that a generic Top-Level Domain, in this case “.com”, is typically ignored when assessing the similarity between a trademark and a domain name. WIPO Overview 3.0, section 1.11.1.

Based on the available record, the Panel finds the first element of the Policy has been established.

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B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the record, the Panel finds the Complainant has established a prima facie case that the rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

The Panel notes that the Respondent, by failing to submit any response, has provided no evidence that it is commonly known by the disputed domain name, although its organization name appears to include the Complainant’s trademark and company name MILESTONE. Furthermore, panels have held that the registration of a company name does not amount of being commonly known by such name, as the registration of a company name is not sufficient for the purposes of the Policy to establish that a respondent is commonly known by such name, if that name had been chosen because of its association with the Complainant. Under the circumstances of this case, considering that in the website at the disputed domain name not only the Complainant’s trademark but also the Complainant’s logo was reproduced, the Panel would find it most likely that the Respondent’s corporate registration, if any, was made having the Complainant in mind and therefore, in any case, finds that the Respondent is not commonly known by the disputed domain name for purposes of the Policy.

Moreover, the Panel finds that the composition of the disputed domain name carries a risk of implied
affiliation as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. WIPO

Overview 3.0, section 2.5.1.

Based on the available record, the Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular but without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, regarding the registration in bad faith of the disputed domain name, the reputation of the
Complainant’s trademark MILESTONE in the information technology field is clearly established, and the
Panel finds that the Respondent must have known of the Complainant, and deliberately registered the
disputed domain name in bad faith, especially because in the website at the disputed domain name the
Complainant’s trademark and logo were reproduced.

The Panel further notes that the disputed domain name is also being used in bad faith since the Respondent was trying to attract Internet users to its website by creating likelihood of confusion with the Complainant’s trademark as to the disputed domain name’s source, sponsorship, affiliation or endorsement, an activity clearly detrimental to the Complainant’s business.

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Furthermore, the Panel considers that the nature of the inherently misleading disputed domain name, which include the Complainant’s trademark MILESTONE in its entirety with the mere addition of the term “ventas” (meaning “sales” in Spanish), further supports a finding of bad faith. WIPO Overview 3.0, section 3.2.1.

The above suggests to the Panel that the Respondent intentionally registered and was using the disputed domain name in order both to disrupt the Complainant’s business, and to attract Internet users to its website in accordance with paragraph 4(b)(iv) of the Policy.

As regards to the current use in bad faith of the disputed domain name, which resolves to an error page, panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the record, the Panel notes the previous use of the disputed domain name and the failure of the Respondent to submit a response, and finds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy.

Based on the available record, the Panel finds the third element of the Policy has been established.

7. Decision

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 name, <milestoneventas.com>, be cancelled.

/Edoardo Fano/
Edoardo Fano
Sole Panelist
Date: December 18, 2024