National Arbitration Forum




Quepasa Corporation v. Texas International Property Associates - NA NA

Claim Number: FA0802001154319



Complainant is Quepasa Corporation (“Complainant”), represented by David G. Baker, of Snell & Wilmer L.L.P., Arizona, USA.  Respondent is Texas International Property Associates - NA NA (“Respondent”), represented by Gary Wayne Tucker, of Law Office of Gary Wayne Tucker, Texas, USA.



The domain name at issue is <>, registered with Compana, LLC.



The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.


Richard DiSalle is Panelist.



Complainant submitted a Complaint to the National Arbitration Forum electronically on February 28, 2008; the National Arbitration Forum received a hard copy of the Complaint on March 6, 2008.


On February 29, 2008, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <> domain name is registered with Compana, LLC and that the Respondent is the current registrant of the name.  Compana, LLC has verified that Respondent is bound by the Compana, LLC registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).


On March 14, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 3, 2008 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to by e-mail.


A timely Response was received and determined to be complete on April 3, 2008.


On April 7, 2008, an Additional Submission was timely filed and received.


As noted below, Respondent filed an Additional Submission on April 14, 2008.


On April 14, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Richard DiSalle as Panelist.



Complainant requests that the domain name be transferred from Respondent to Complainant.



A.  Complainant

Quepasa Corporation ("Quepasa") (Nasdaq: QPSA), headquartered in Scottsdale,

Arizona (with offices in Miami and Mexico), operates <>, one of the world's largest bicultural Latino online social communities, with more than one million registered users, and more than two million daily hits.  The website serves users worldwide in both Spanish and English.  Quepasa provides visitors with entertaining, enriching and empowering services, features and content, including chat rooms, entertainment, sports, health and fitness, fashion and breaking news, as well as an active social network and Latin America TV channel video streaming.  The site's appeal derives from its rich bicultural environment, where members connect with others who share similar passions and interests.  In connection with the <> website and other corporate activities, Quepasa has developed substantial goodwill in its QUEPASA family of trademarks and service marks, and as such, the marks are well-known to consumers.


In the present case, Respondent fully incorporated Complainant's mark and merely added a generic term related to aspects of Complainant's business.  Therefore, <> is confusingly similar to Complainant's QUEPASA mark.


Respondent has never used the domain name in connection with a bona fide offering of goods or services, nor made a legitimate non-commercial or fair use of the domain name.  Instead, the domain name merely resolves to a parking page featuring links relating to Complainant's type of business in the online chat industry.  Respondent is capitalizing on Complainant's well-known QUEPASA mark by attracting Internet users-likely including Complainant's current and prospective customers-to its website and redirecting them to websites potentially associated with Complainant's competitors, presumably in exchange for click-through fees.


Complainant registered <> in 1998 and began using the QUEPASA mark in commerce at least as early as that time.  Not until more than six years later did Respondent register the domain at issue-on February 28, 2005.  Furthermore, <> was registered more than ten months after Complainant filed the federal trademark application for QUEPASA on April 10th, 2004.  Therefore, it is highly likely that Respondent had actual knowledge of Complainant at the time Respondent registered the domain name at issue.


Respondent uses the subject domain name to direct consumers to other commercial sites, presumably in return for click-through fees.  Earning referral fees by linking to other websites resulting in commercial gain to Respondent is indisputable evidence of bad faith.


Respondent is not commonly known by the name <>.  To the contrary, Respondent registered the domain name under the name Texas International Property Associates-NA NA with an address in Dallas, Texas, which has no apparent relation to the mark QUEPASA.  Further, there is no indication on Respondent’s website that Respondent has ever been commonly known by this name.


The fact that <> prominently features Complainant’s QUEPASA mark is further evidence of bad faith registration and use – regardless of Respondent’s knowledge of the QUEPASA mark prior to registration.


      B.  Respondent

Complainant begins its Complaint with the three federal registrations it claims give it rights under the Policy.  The Complaint lists the filing date but not the date that the registrations were actually issued.  The reason for this is simple.  The first listed registration was filed April 10, 2004 but not actually registered until May 23, 2006.  The disputed domain was registered February 28, 2005.  Exhibit A.  Thus at the time the disputed domain was registered none of the three registrations were yet complete and two were not to be filed for another two years.


A search of the United States Patent & Trademark Office (“USPTO”) for the term “que pasa” shows that, while now a dead mark, the earliest mark was issued in 1975 for corn chips.  Thus the common term “que pasa” has been the ongoing subject of federal registrations for over 30 years.  It is unclear that Complainant in this case has exclusive rights to the name at issue under the Policy, because “[w]hatever the length of use by one party, use of part or all of the mark by third parties weakens the mark’s overall strength.”  Media West-GSI, Inc., & Gannett Satellite Info. Network, Inc.  v. EARTHCARS.COM, INC., D2000-0463 (WIPO July 31, 2000), citing Streetwise Maps Inc. v. Vandam, Inc., 159 F.3d 739, 744 (2d Cir. 1998).


Respondent contracts with Hitfarm which connects its own websites to the domain names to offer a legitimate business of targeted advertising searches that are legal everywhere in the world and are actually undertaken in connection with industry leaders Google and Yahoo.  The links in question are provided pursuant to Yahoo or Google’s terms and are triggered by search requests entered by computer users.  There is no intent to target Complainant, but to provide advertising for chat users as a glimpse of what the disputed domain will show.  Respondent has no control over what terms advertisers bid on at Google or Yahoo and what terms appear on its website.


Respondent registered the disputed domain name because it believed it contained a descriptive term to which no party had exclusive rights.  In fact, the principal that the mere ownership of a common term domain should, in and of itself, establish the owner’s rights and legitimate interest has been recognized by several ICANN panels.


The Complaint notes that bad faith registration can be inferred because of Complainant’s then pending trademark application when the disputed domain was registered.  Respondent points out that the application was not published for opposition until November 8, 2005 – months after the disputed domain was registered in February of 2005.  In fact it could have easily assumed that since the application had been pending for almost a year it would never be registered and it took another year to obtain this registration.


In this case, the Respondent in Texas had no actual knowledge of Complainant’s business and Panels have recognized that mere registration without actual knowledge does not impute a finding of bad faith.  N.J. Divorce Center, Inc. v. iGenesis Ltd., FA 584783 (Nat. Arb. Forum Dec. 14, 2005).


C.  Complainant’s Additional Submission

Complainant timely submitted an Additional Submission on April 7, 2008, as follows:


Respondent asserts, contrary to Forum decisions, that “Respondent may fairly use descriptive or generic terms as a commercial domain name . . .regardless of whether they are federally registered.  (Resp. at 2; emphasis added.)  Respondent is incorrect.  While merely descriptive terms are not subject to trademark protection, descriptive terms are subject to trademark registration.  Significantly, the USPTO has determined that QUEPASA is not generic nor merely descriptive, and Complainant respectfully submits that the Forum “is not empowered to nor should it disturb that determination.”  See U.S. Office of Pers. Mgmt., FA 198898 (Nat. Arb. Forum Dec. 9, 2003).


Respondent attempts to obfuscate the likelihood of confusion analysis by pointing to other federal trademark registrations for QUE PASA related to corn chips and other food products.  (Resp. at 2-3.)  However, showing registrations for products completely unrelated to Complainant’s services is irrelevant to the determination of Complainant’s rights in the QUEPASA trademark and highlights a significant lack of understanding of trademark law.


Respondent has no rights or legitimate interests in the subject domain name.  Respondent has never used the domain name in connection with a bona fide offering of goods or services, nor made a legitimate non-commercial or fair use of the domain name.  Instead, the domain name merely resolves to a parking page featuring links relating to Complainant’s type of business in the online chat industry.


Questions of trademark invalidity, including questions of whether a mark is generic or highly descriptive and hence not susceptible to legal exclusivity as a valid federal trademark, are simply not within the purview of a UDRP proceeding and are best left for either court adjudication or inter-partes adjudication before appropriate governmental bodies having requisite jurisdiction and competence to handle such issues.  Associated Bank Corp. v. Tex. Int’l Prop. Assoc., D2007-0334 (WIPO June 28, 2007) (emphasis added) quoted in Countrywide Fin. Corp., FA 1075750 (Nat. Arb. Forum Nov. 2, 2007).


However, Complainant notes what another panel has found with respect to Respondent’s cybersquatting:


[Texas International Property Associates] has established a pattern of conduct which is illustrated in fifty-seven domain name dispute cases.  In some of these cases Respondent registered domain names that entirely appropriated another’s trademark . . . These cases are a few examples contained in the archives of the National Arbitration Forum.  There are eighteen WIPO cases of the same sort.  What seems obvious from all of these cases is that Respondent is exercising an extensive use [of] the marks of others for Respondent’s financial gain.  The Panel will not cite or analyze all of the numerous cases involving this Respondent.  This pattern of conduct alone shows bad faith registration and use in this case.


All of this shows a high likelihood that Respondent knew of Complainant and Complainant’s business at the time Respondent registered the subject domain name.  In fact, it stretches the imagination to conceive how Respondent would not have known of Complainant.  Respondent merely tries to justify its cybersquatting activities and shows no evidence, other than bare, unsubstantiated allegations of its lack of knowledge of Respondent, that the domain name was not registered in bad faith.


D.  Respondent’s Additional Submission

Respondent filed a Reply and Objection to Complainant’s Additional Submission on April 14, 2008, as follows:


Under Rule 12 of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), it is quite clearly stated that “In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties.”  Under the Forum’s Supplemental Rules, Rule 7 (“Rule 7”) allows for the filing of such statements and documents without a request from the Panel.  Respondent believes that Rule 7 is an improper modification of the Rules.


Respondent notes that the Additional Submission contains no newly discovered evidence nor did the Response raise any arguments which Complainant could not have anticipated.  The only thing worth responding to is an oddity at the bottom of page 3 that Respondent “deceptively failed to note” a federal registration of Complainant.  What makes this odd is that Complainant, in its own Complaint, did not make note of the ‘666 registration’ that it claims the Respondent is deceptive in not noting.  Respondent was aware of the ‘666 registration’ but ignored it since the assumption was that Complainant did not use that registration in its Complaint.



(1)   the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

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

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



Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”


Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:


(1)  the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

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


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


Initially, we observe that it is not the Panel’s function to determine whether, as Respondent claims, Rule 7 is an improper modification of the Forum’s rules.


Identical and/or Confusingly Similar

The Panel finds that the <> mark is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).  The addition of the generic top-level domain (“gTLD”) “.com” is irrelevant for distinguishing a disputed domain name from a registered mark because all registered domain names are required to have a top-level domain.  Therefore, the Panel concludes that the disputed domain name is confusingly similar to the QUEPASA mark under Policy ¶ 4(a)(i).  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000).


Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).


Respondent has failed to use the disputed domain name in connection with a bona fide offering of goods or services, or made a legitimate noncommercial or fair use of the disputed domain.  The disputed domain name merely resolves to a parked page featuring links related to and competing with Complainant’s business.  The Panel finds that such use is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001).


Although Respondent states that it is not responsible for the content on the website due to its third-party contract, Respondent did choose the terms which would appear on its website by choosing to register the <> domain name.  See State Farm Mut. Auto. Ins. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site.  Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”).


Registration and Use in Bad Faith

Respondent is using the disputed domain name to direct Internet users to competing websites, commercially benefiting by receiving click-through fees.  The Panel concludes that such use is evidence of registration and use in bad faith under Policy ¶ 4(b)(iv).  See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003).


Respondent’s use is capable of disrupting Complainant’s business, and therefore is further evidence of registration and use in bad faith under Policy ¶ 4(b)(iii).  See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website.  It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).



Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.


Accordingly, it is Ordered that the <> domain name be TRANSFERRED from Respondent to Complainant.




Richard DiSalle, Panelist
Dated:  April 28, 2008



National Arbitration Forum




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