Phusion Projects, LLC v. Miguel ruiz
Claim Number: FA1910001864950
Complainant is Phusion Projects, LLC (“Complainant”), represented by Danielle Johnson of Goldberg Kohn Ltd., Illinois, USA. Respondent is Miguel ruiz (“Respondent”), Mexico.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fourlokomexico.com>, registered with Google LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Eugene I. Low as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 1, 2019; the Forum received payment on October 1, 2019.
On October 1, 2019, Google LLC confirmed by e-mail to the Forum that the <fourlokomexico.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 4, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 24, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@fourlokomexico.com. Also on October 4, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On October 28, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Eugene I. Low as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a producer of flavored alcoholic beverages. Complainant has rights in the FOUR LOKO mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,988,581 registered July 5, 2011) and Mexican Institute of Industrial Property (“MIIP”) (e.g. Reg. No. 1,220,028, registered May 31, 2011). Respondent’s <fourlokomexico.com> domain name is confusingly similar to Complainant’s FOUR LOKO mark. Respondent incorporates Complainant’s entire FOUR LOKO mark and merely adds the geographic indicator “MEXICO.”
Respondent has no rights or legitimate interests in the <fourlokomexico.com> domain name as Respondent is not commonly known by the disputed domain name. Respondent also fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s disputed domain name fails to resolve to any webpage. Complainant has not licensed or authorized Respondent to use the FOUR LOKO mark.
Respondent registered and used the <fourlokomexico.com> domain name in bad faith as Respondent fails to make an active use of the disputed domain name. Respondent had actual knowledge of Complainant’s rights in the FOUR LOKO mark prior to registration of the disputed domain name due to the fame and notoriety of the FOUR LOKO mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Panel finds in favor of Complainant.
The Panel is satisfied that Complainant has rights in the FOUR LOKO mark through its registration with the USPTO and MIIP. Registration of a mark with multiple trademark agencies is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). The Panel is also satisfied that Complainant has established rights in the FOUR LOKO mark through use.
The Panel accepts Complainant's argument that Respondent’s <fourlokomexico.com> domain name is confusingly similar to Complainant’s FOUR LOKO mark. The domain name incorporates Complainant’s mark in its entirety, and the mere addition of a geographic descriptor "mexico" does not distinguish the domain name from the mark.
The Panel finds in favor of Complainant.
Complainant has established a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name. The Panel accepts Complainant's contention that Respondent is not commonly known by the disputed domain name nor has Respondent been licensed or authorized by Complainant to use the FOUR LOKO mark. Complainant also argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use; instead, Respondent’s disputed domain name fails to resolve to any webpage.
Respondent has not submitted any response to argue against this prima facie case.
The Panel considers that Complainant has established this element.
Complainant's evidence shows that Complainant has acquired a certain degree of fame and notoriety for its FOUR LOKO mark prior to registration of the disputed domain name. In particular, Complainant has trademark registrations for the FOUR LOKO mark in Mexico, and the disputed domain name comprises both elements "FOUR LOKO" and "MEXICO". This is liable to create confusion. In addition, Complainant's evidence shows that Respondent fails to make any active use of the disputed domain name. Looking at the totality of the circumstances, and in the absence of counter-arguments by Respondent, the Panel accepts Complainant's contention that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fourlokomexico.com> domain name be TRANSFERRED from Respondent to Complainant.
Eugene I. Low, Panelist
Dated: October 30, 2019
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