Compania Licorera de Centroamerica, S.A.
v. Lucrecia Rojas
Claim Number: FA0203000106121
PARTIES
Complainant
is Compania Licorera de Centroamerica,
S.A., PANAMA CITY, PANAMA
(“Complainant”) represented by Mariana
Blanco, of Fowler, White, Burnett PA. Respondent is Lucrecia Rojas, Alajuela, COSTA RICA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <flordecaña.com>
(BQ--ABTGY33SMRSWGYPRME.COM),
registered with Verisign - Network
Solutions, Inc.
PANEL
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.
John
J. Upchurch as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on March 27, 2002; the Forum received a hard copy of the
Complaint on March 29, 2002.
On
April 5, 2002, Verisign - Network Solutions, Inc. confirmed by e-mail to the
Forum that the domain name <flordecaña.com>
is registered with Verisign - Network Solutions, Inc. and that Respondent
is the current registrant of the name. Verisign
- Network Solutions, Inc. has verified that Respondent is bound by the Verisign
- Network Solutions, Inc. 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
April 8, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of April 29,
2002 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 postmaster@flordecaña.com and postmaster@BQ--ABTGY33SMRSWGYPRME.COM
by e-mail.
Having received no Response from Respondent, using the
same contact details and methods as were used for the Commencement
Notification, the Forum transmitted to the parties a Notification of Respondent
Default.
On
May 8, 2002, pursuant to Complainant’s request to have the dispute decided by a
single-member Panel, the Forum appointed John J. Upchurch 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.” 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
1.
Respondent’s domain name is identical to Complainant’s well-established mark.
2.
Respondent has no rights or legitimate interests in the <flordecaña.com> domain
name.
3. Respondent has registered a domain name that is
identical to Complainant’s mark and Respondent has used the disputed domain
name to create confusion with the general public which will acquire a negative
impression of Complainant’s business by accessing a non-working website and
thus tarnish Complainant’s well-known mark.
Therefore, Respondent has registered and used the disputed domain name
in bad faith.
B.
Respondent
No
Response was submitted.
FINDINGS
Complainant registered FLOR DE CANA with
the United States Patent and Trademark Office on November 1, 1994, Registration
Number 1,861,443. Complainant uses the
mark in connection with a well-known rum distillery in Nicaragua with annual
sales in excess of five million liters per year. Complainant and its parent company also have the mark FLOR DE
CAÑA registered in numerous other countries worldwide. Complainant uses the domain name
<flordecana.com> in connection with promoting its goods on the Internet.
Respondent registered <flordecaña.com>
(BQ--ABTGY33SMRSWGYPRME.COM) on May 12, 2001. There is no
evidence presented that Respondent has actually used the website associated
with the disputed domain name, and currently the website is not in operation.
DISCUSSION
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.”
In view
of Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the Complainant's undisputed representations
pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such
inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
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; and
(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.
Identical and/or Confusingly Similar
Complainant has established its rights to
the FLOR DE CANA mark through registration with the USPTO and subsequent
continuous use. The <flordecaña.com> domain name is confusingly similar to
Complainant’s mark.
The disputed
domain name is nearly identical to Complainant’s mark because spaces in a
domain name does not create a distinction capable of overcoming the identical
nature of the domain name and mark. See
Hannover
Ruckversicherungs-AG v. Ryu,
FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be
identical to HANNOVER RE, “as spaces are impermissible in domain names and a
generic top-level domain such as ‘.com’ or ‘.net’ is required in domain
names”); see Croatia Airlines v.
Kwen Kijong, AF-0302 (eResolution Sept. 25, 2000) (finding that the domain name <croatiaairlines.com> is
identical to Complainant's CROATIA AIRLINES trademark).
The only
significant difference between the disputed domain name and the mark is that
the disputed domain name replaces “n” with an “ñ.” It has been held that where a domain name incorporates
Complainant’s mark and merely adds an international language symbol in the
domain name, the domain name and the mark are considered confusingly
similar. See Fortuneo
v. Guinebert, D2001-0781
(WIPO Sept. 5, 2001) (finding the FORTUNEO mark and the domain name
<fortunéo.com> confusingly similar); see also Kværner ASA v. Tele og Media Consult as, D2001-0809
(WIPO Sept. 12, 2001) (finding the KVAERNER mark and the domain name
<kværner.net> confusingly similar).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights or Legitimate Interests
Respondent has not filed a Response. Therefore, the Panel presumes that
Respondent has no rights or legitimate interests in <flordecaña.com>. See Strum v. Nordic Net Exchange AB,
FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (finding that Respondent's failure to
respond to the Panel's additional requests warranted a finding for
Complainant). Because a Response was
not filed, the Panel presumes that all allegations in the Complaint are true. See Talk City, Inc. v. Robertson,
D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is
appropriate to accept as true all allegations of the Complaint”).
Based on the
Complaint, and since there is no other evidence presented otherwise, the Panel
concludes that Respondent has no made a use of the disputed domain name. This is not a use in connection with a bona
fide offering of goods and services pursuant to Policy ¶ 4(c)(i), nor is it a
legitimate, noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB
v. Romero, D2000-1273
(WIPO Nov. 13, 2000) (finding no rights or legitimate interests where
Respondent failed to submit a Response to the Complaint and had made no use of
the domain name in question); see also Vestel Elektronik Sanayi ve Ticaret AS v. Mehmet Kahveci,
D2000-1244 (WIPO Nov. 11, 2000) (finding that “…merely registering the domain
name is not sufficient to establish rights or legitimate interests for purposes
of paragraph 4(a)(ii) of the Policy”).
According to the evidence presented,
Respondent is not commonly known as <flordecaña.com>
and thus does not have a right or legitimate interest in the disputed
domain name pursuant to Policy ¶ 4(c)(ii).
See Gallup Inc. v. Amish
Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent
does not have rights in a domain name when Respondent is not known by the
mark); see also Compagnie de Saint
Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no
rights or legitimate interest where Respondent was not commonly known by the
mark and never applied for a license or permission from Complainant to use the
trademarked name).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Registration and Use in Bad Faith
Based on the evidence presented,
Respondent registered a domain name that incorporates a famous mark as soon as
it was possible to register domain names that include the “ñ.” This is evidence that Respondent has engaged
in opportunistic bafd faith and therefore, has registered <flordecaña.com> in
bad faith. See Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so
obviously connected with the Complainants that the use or registration by
anyone other than Complainants suggests ‘opportunistic bad faith’”); see
also Sony Kabushiki Kaisha v. Inja,
Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use
where it is “inconceivable that the respondent could make any active use of the
disputed domain names without creating a false impression of association with
the Complainant”).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that the requested relief
should be hereby granted.
Accordingly, it is Ordered that the <flordecaña.com>
(BQ--ABTGY33SMRSWGYPRME.COM) domain name be transferred from
Respondent to Complainant.
John J. Upchurch, Panelist
Dated: May 14, 2002
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page