Compania Licorera de Nicaragua, S.A. v. Carlos Valbuena Balaguer
Claim Number: FA0711001106695
Complainant is Compania Licorera de Nicaragua, S.A.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <flordecaña.com>, registered with Arsys Internet, S.L. d/b/a Nicline.com.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 7, 2007; the National Arbitration Forum received a hard copy of the Complaint on November 9, 2007. The Complaint was submitted in both Spanish and English.
On November 8, 2007, Arsys Internet, S.L. d/b/a Nicline.com confirmed by e-mail to the National Arbitration Forum that the PUNYCODE equivalent of the <flordecaña.com> domain name [<xn--flordecaa-s6a.com>] is registered with Arsys Internet, S.L. d/b/a Nicline.com and that Respondent is the current registrant of the name. Arsys Internet, S.L. d/b/a Nicline.com has verified that Respondent is bound by the Arsys Internet, S.L. d/b/a Nicline.com 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 November 28, 2007, a Spanish language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 18, 2007 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 by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 24, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Spanish language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <flordecaña.com> domain name is identical to Complainant’s FLOR DE CAÑA mark.
2. Respondent does not have any rights or legitimate interests in the <flordecaña.com> domain name.
3. Respondent registered and used the <flordecaña.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Compania Licorera de Nicaragua, S.A., is in the business of selling various kinds of rum. Complainant holds a registered trademark with the Spanish Patent and Trademark Office for the FLOR DE CAÑA mark (Reg. No. 2,342,770/1 issued March 5, 2001). Complainant also holds the registration for the <flordecana.com> domain name.
Respondent, Carlos Valbuena Balaguer, registered the <flordecaña.com> domain name on January 3, 2007, and is using the disputed domain name to maintain a blog intended to inform the public regarding the origin and function of the “flor de caña,” or the “flower of the cane.” Respondent has made a single posting to this blog inviting others to share their thoughts, but Respondent’s posting remains the only one on the blog. Respondent has also offered to sell the disputed domain name to Complainant for $10,000.
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 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
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.
Preliminary Issue:
Internationalized Domain Name
The domain name in dispute, <flordecaña.com>, is an internationalized domain name (“IDN”) with the
PUNYCODE translation of [<xn--flordecaa-s6a.com>]. An IDN is a domain name that contains non-traditional
characters, such as letters with diacritics or non-Latin characters. In order to display characters or symbols in
a domain name, the terms of the domain name are encoded into a scheme such as
PUNYCODE. For Complainant to display the
[<xn--flordecaa-s6a.com>] properly in the <flordecaña.com> domain name, it first had to
encode it into the [<xn--flordecaa-s6a.com>] domain name.
In
the past, panels have found IDNs and their Punycode translations to be
equivalent. See Damien
Persohn v. Lim, FA 874447 (Nat. Arb.
Forum Feb. 19, 2007) (finding an internationalized domain name,
<têtu.com>, and its Punycode
translation, <xn--ttu-fma.com>, to
be one and the same under the Policy); see
also Württembergische Versicherung AG v. Emir Ulu, D2006-0278
(WIPO May 4, 2006) (finding that the
<xn--wrttembergische-versicherung-16c.com> should be considered as
equivalent to the <württembergische-versicherung.com> domain name, based
on previous panel decisions recognizing the relevance of I-nav software for
translating German letters such as “ä” or “ü” into codes such as
<xn--[name]-16c> and similar); see also Fujitsu Ltd. v. tete and
Lianqiu Li, D2006-0885 (WIPO Oct. 12, 2006) (finding the
<xn--zqsv0e014e.com> domain name to be an exact reproduction of the complainant’s
Chinese trademark in a domain name).
This Panel finds that the <flordecaña.com>
domain name is one
and the same with its Punycode translation, [<xn--flordecaa-s6a.com>],
for purposes of this
proceeding.
Complainant has asserted rights to the FLOR DE CAÑA mark based on its trademark registration with the Spanish Patent and Trademark Office. Under the Policy, registration of a mark with an appropriate governmental authority confers rights in that mark to a complainant. Therefore, based on its trademark registration, the Panel finds that Complainant has successfully established rights to the FLOR DE CAÑA mark pursuant to Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Respondent’s <flordecaña.com> domain name contains Complainant’s FLOR DE CAÑA mark in its entirety without the spaces and adds the generic top-level domain (“gTLD”) “.com.” The lack of spaces and addition of the top-level domain are necessary in order to register the domain name, and are therefore irrelevant under an analysis of the Policy. Therefore, the Panel finds that Respondent’s <flordecaña.com> domain name is identical to Complainant’s FLOR DE CAÑA mark pursuant to Policy ¶ 4(a)(i). See Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to complainant’s mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ … [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”); see also Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <flordecaña.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests under Policy ¶ 4(a)(ii). Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Since Respondent has not responded to the Complaint, the Panel will examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
No evidence in the record, including the WHOIS information, indicates that Respondent may be commonly known by the disputed domain name. Furthermore, Complainant has indicated that it has not granted a license to Respondent to use the FLOR DE CAÑA mark in a domain name. Based on these findings, the Panel concludes that Respondent is not commonly known by the <flordecaña.com> domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent is using the <flordecaña.com> domain name to post a blog regarding the origin and function of the “flower of the cane.” However, Respondent’s own post is the only one listed on the blog, and Respondent has not taken any steps to further develop the website that resolves from the disputed domain name. Therefore, the Panel finds that Respondent is not using the <flordecaña.com> domain name in connection with a bona fide offering of goods and services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also LFP, Inc. v. B & J Props., FA 109697 (Nat. Arb. Forum May 30, 2002) (a respondent cannot simply do nothing and effectively “sit on his rights” for an extended period of time when that the respondent might be capable of doing otherwise).
Complainant has also submitted evidence that Respondent offered to sell the disputed domain name to Complainant for $10,000. This is an amount well in-excess of Respondent’s out-of-pocket costs, and therefore further evidences Respondent’s lack of rights and legitimate interests in the <flordecaña.com> domain name pursuant to Policy ¶ 4(a)(ii). See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s offer to sell the <flordecaña.com> domain name to Complainant for $10,000, an amount in excess
of Respondent’s out-of-pocket costs, also demonstrates that Respondent
registered and is using the disputed domain name in bad faith pursuant to
Policy ¶ 4(b)(i). See Campmor, Inc. v. GearPro.com, FA 197972 (Nat.
Arb. Forum
Nov. 5, 2003) (“Respondent registered the disputed domain name and offered to
sell it to Complainant for $10,600. This demonstrates bad faith
registration and use pursuant to Policy ¶ 4(b)(i).”); see also Dynojet Research, Inc. v.
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <flordecaña.com> [<xn--flordecaa-s6a.com>] domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: January 7, 2008
National
Arbitration Forum