Claim Number: FA0711001111951
Complainant is Fertur Peru E.I.R.L. (“Complainant”), represented by Richard
J. Vecchio, Jr. Junin 211, Lima, II 1, Peru. Respondent is Belize Domain WHOIS Service Lt (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ferturperu.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 19, 2007; the National Arbitration Forum received a hard copy of the Complaint on November 26, 2007.
On November 20, 2007, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <ferturperu.com> domain name is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.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 December 7, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 27, 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
<ferturperu.com> domain name
is identical to Complainant’s FERTUR
2. Respondent does not have any rights or legitimate interests in the <ferturperu.com> domain name.
3. Respondent registered and used the <ferturperu.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Fertur Peru E.I.R.L., is a family-owned travel
agency and operator based in
Complainant registered the <ferturperu.com> domain name on April 24, 2004. The disputed domain name expired on April 24, 2007, and its registration was inadvertently allowed to lapse. Respondent registered the <ferturperu.com> domain name thereafter, and is using it to resolve to a website which offers products and services in direct competition with Complainant.
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.
To assert rights in a mark, Complainant need not demonstrate that the FERTUR PERU mark is registered with a national regulatory body such as the United States Patent and Trademark Office (“USPTO”). See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).
Complainant asserts sufficient evidence to establish common law rights in the mark to grant standing under the UDRP pursuant to Policy ¶ 4(a)(i). Complainant alleges that the mark has become distinct due to its usage in connection with international travel agency services for almost 15 years, as well as its descriptions in major travel guides. Moreover, Complainant has participated in a number of international travel conventions and has registered the mark with Florida Department of State. Finally, Complainant previously owned the <ferturperu.com> domain name, which suggests strong evidence of rights in the FERTUR PERU mark. Thus, the Panel finds that Complainant’s use of the mark adequately establishes its rights for the purposes of Policy ¶ 4(a)(i) dating back to before the registration of the disputed domain name. See Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”); see also Bibbero Sys., Inc. v. Tseu & Assoc., FA 94416 (Nat. Arb. Forum May 9, 2000) (finding, while the complainant had registered the BIBBERO SYSTEMS, INC. mark, it also had common law rights in the BIBBERO mark because it had developed brand name recognition with the word “bibbero”); see also Suburban Ostomy Supply Co. v. Tremblay, FA 140639 (Nat. Arb. Forum Feb. 24, 2003) (“Complainant’s continuous use in commerce and its prior registration of the [disputed] domain name provide strong evidence that Complainant has rights in the SUBURBAN OSTAMY mark pursuant to Policy ¶ 4(a)(i).”).
Respondent’s <ferturperu.com> domain name is identical to Complainant’s FERTUR PERU mark under Policy ¶ 4(a)(i), as the addition of the generic top-level domain “.com” is irrelevant to such an analysis. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Blue Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to the complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference").
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the <ferturperu.com> domain name. Complainant has set forth a sufficient prima facie case, thus the burden shifts to Respondent to prove it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent has failed to respond to the Complaint, thus the Panel may conclude that Respondent lacks rights and legitimate interests in the disputed domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). However, the Panel will examine all of the evidence in the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
Respondent is using the <ferturperu.com> domain name to resolve to a website that offers products and services in direct competition with Complainant. The Panel finds that such commercial use of the FERTUR PERU mark does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). See DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks); see also eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where the respondent attempted to profit using the complainant’s mark by redirecting Internet traffic to its own website).
Respondent offers no evidence in the record to suggest that
it is commonly known by the <ferturperu.com>
domain name. Moreover, the WHOIS domain
name registration information provides no contrary conclusion. Finally, Respondent alleges no license to use
Complainant previously owned the <ferturperu.com> domain name but inadvertently allowed it to lapse after its expiration. The Panel finds that Complainant’s previous ownership of the disputed domain name constitutes evidence that Respondent lacks rights and legitimate interests pursuant to Policy ¶ 4(a)(ii). See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Servs., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that the complainant’s prior registration of the same domain name is a factor in considering the respondent’s rights or legitimate interests in the domain name); see also Zappos.com, Inc. v. Turvill Consultants, FA 404546 (Nat. Arb. Forum Feb. 28, 2005) (“[T]he fact that Complainant had previously held the <wwwzappos.com> domain name registration and has mistakenly allowed it to expire is further evidence that Respondent lacks rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii).”); see also Clark v. HiNet, Inc., FA 405057 (Nat. Arb. Forum Mar. 4, 2005) (finding that the respondent lacked rights and legitimate interests in the domain name because it failed to respond to the complaint and it “opportunistically” registered the domain name when the complainant inadvertently allowed the registration to lapse).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <ferturperu.com>
domain name to resolve to a website which features products and services in
direct competition with Complainant. The
Panel thus finds that Respondent’s use of Complainant’s FERTUR
Respondent intentionally diverts Internet users seeking
Complainant’s business to its own website and corresponding services by way of
the <ferturperu.com> domain
name. Such diversion creates a
likelihood of confusion with Complainant’s FERTUR
The Panel finds that Respondent’s opportunistic registration of the <ferturperu.com> domain name after Complainant inadvertently allowed it to lapse constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (“Where the domain name has been previously used by the Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary.”); see also Aurbach v. Saronski, FA 155133 (Nat. Arb. Forum May 29, 2003) (“Where the domain name registration was previously held, developed and used by Complainant, opportunistic registration of the domain name by another party indicates bad faith, absent any justification that illustrates legitimate use.”).
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 <ferturperu.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: January 15, 2008
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