Tropicana Europe NV v. Elisabeth Moreno
Claim Number: FA0711001115190
Complainant is Tropicana Europe NV (“Complainant”), represented by Paul
D. McGrady, of Greenberg Traurig, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <alvalle.com>, registered with Godaddy.com, Inc.
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.
Honorable Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 28, 2007; the National Arbitration Forum received a hard copy of the Complaint on November 29, 2007.
On November 29, 2007, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <alvalle.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 November 29, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 19, 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@alvalle.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 27, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <alvalle.com> domain name is identical to Complainant’s ALVALLE mark.
2. Respondent does not have any rights or legitimate interests in the <alvalle.com> domain name.
3. Respondent registered and used the <alvalle.com> domain name in bad faith.
B. Respondent failed to submit a timely, proper Response in this proceeding. There was a response received after the deadline for responding, and in electronic format only. Therefore, the response was not in compliance with ICANN Rule 5. The response was not considered by the Panel.
Complainant, Tropicana Europe NV, markets its gazpacho and
related products in
Respondent registered the <alvalle.com> domain name on November 4, 1997. The disputed domain name was previously used to promote gazpachos and soups directly competing with Complainant’s products. After receipt of a transfer demand from Complainant, Respondent modified the WHOIS information to reflect “Elisabeth Moreno” as the Registrant and changed the website content to redirect Internet users to a surname finder webpage.
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.
Complainant has registered the ALVALLE mark with the SPTO and the EOHIM, and therefore established rights to the mark pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
The <alvalle.com> domain name incorporates Complainant’s entire ALVALLE mark, and therefore the Panel finds that the disputed domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i). The addition of the generic top-level domain (“gTLD”) “.com” does not sufficiently distinguish the disputed domain name from the registered mark because all domain names are required to have a top-level domain. 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 contends that Respondent has neither rights nor legitimate interests in the disputed domain name. Complainant must first present a prima facie case establishing that Respondent lacks all rights and legitimate interests in the disputed domain name. Once Complainant has met the burden and made a prima facie case supporting the assertion that Respondent lacks rights and legitimate interests, the burden shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has demonstrated that Respondent lacks rights and legitimate interests, and thus made a prima facie case 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).
The Panel presumes that Respondent lacks all rights and legitimate interests in the disputed domain name because Respondent failed to answer the Complaint. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed 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 evidence in the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant asserts that Respondent has never been authorized to use the ALVALLE mark, and that Respondent is not commonly known by the disputed domain name. Moreover, the WHOIS information does not indicate that Respondent is commonly known by the disputed domain name. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Respondent’s use of the disputed domain name to sell
products competing with the gazpacho and soup products marketed by Complainant
is neither a bona fide offering of goods
or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii). See G.D.
Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19,
2002) (finding that because the respondent is using the infringing domain name
to sell prescription drugs, the panel could infer that the respondent is using
the complainant’s mark to attract Internet users to its website for commercial
benefit); 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).
Following Complainant’s transfer
demand, Respondent has been using the disputed domain name to redirect Internet
users to a “surname finder” page. The
Panel finds that Respondent’s current use of the disputed domain name does not
demonstrate rights or legitimate interests in the disputed domain name. See WeddingChannel.com
Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that
the respondent’s use of the disputed domain name to
redirect Internet users to websites unrelated to the complainant’s mark,
websites where the respondent presumably receives a referral fee for each
misdirected Internet user, was not a bona fide offering of goods or
services as contemplated by the Policy);
see also 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).”).
The Panel finds that Policy ¶
4(a)(ii) has been satisfied.
Respondent was using the <alvalle.com>
domain name to attract Internet users to its website for commercial
gain by creating a likelihood of confusion with Complainant as to the source,
sponsorship, affiliation, or endorsement of the website that resolved from the
disputed domain name. The website that
resolved from the disputed domain name advertised soup products competing with
Complainant’s products. Complainant
asserts that Respondent is benefiting by such commercial use. The Panel finds that Respondent is using the
disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iv). See MathForum.com,
LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith
under Policy ¶ 4(b)(iv) where the respondent registered a domain name
confusingly similar to the complainant’s mark and the domain name was used to
host a commercial website that offered similar services offered by the
complainant under its mark); see
also Luck's Music Library v. Stellar
Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the
respondent engaged in bad faith use and registration by using domain names that
were identical or confusingly similar to the complainant’s mark to redirect
users to a website that offered services similar to those offered by the
complainant).
The Panel finds that
Respondent’s previous use of the disputed domain name to advertise competing
products also constitutes registration and use in bad faith under Policy ¶
4(b)(iii). See 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); see also 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).”).
The Panel also finds Respondent’s
current use of the disputed domain name to redirect Internet users to a
“surname finder” website evidence of registration and use in bad faith under
Policy ¶ 4(b)(iv). See Bank of Am. Corp. 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 <alvalle.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: January 9, 2008
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