Caribbean Publishing
Company, Ltd. v. ATOMBI
Claim Number: FA0805001189184
PARTIES
Complainant is Caribbean Publishing Company, Ltd. (“Complainant”), represented by Paul
D. McGrady, of Greenberg Traurig, LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yellowpages-caribbean.com>,
registered with Network Solutions, Inc.
PANEL
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.
Luiz Edgard Montaury Pimenta as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on May 6, 2008; the
National Arbitration Forum received a hard copy of the Complaint on May 7, 2008.
On May 7, 2008, Network Solutions, Inc. confirmed by e-mail to
the National Arbitration Forum that the <yellowpages-caribbean.com> domain
name is registered with Network Solutions, Inc.
and that the Respondent is the current registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the 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 May 9, 2008, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of May 29, 2008 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@yellowpages-caribbean.com by e-mail.
A Response was received and determined to be deficient on May 29, 2008 a hard copy of the Response
was not received by the Response deadline.
Complainant submitted an Additional Submission on June 3, 2008 that was
determined to be timely under the National Arbitration Forum’s Supplemental
Rule 7.
On June 3, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Luiz Edgard Montaury Pimenta as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that is the owner of
Complainant asserts it first began use of its
Complainant contends that the disputed domain name was registered in
1990, that is, well after it had established trademarks rights to its mark.
Identical or Confusingly
Similar
Complainant asserts that the disputed domain name incorporates its
trademark CARIBBEAN YELLOW PAGES in its entirety and adds only a hyphen and
juxtaposes the textual elements and is therefore confusingly similar.
Rights or Legitimate Interests
Complainant contends that Respondent has no trademark or other
intellectual property rights to the domain name. Complainant asserts it has not
granted Respondent any license, permission, or authorization by which it could
own or use any domain name registrations which are confusingly similar to any
of Complainant’s marks.
Complainant also asserts that Respondent has never operated any bona fide or legitimate business through
the disputed domain name and that, instead, Respondent is using it to offer
services that compete directly with its services.
Registered and used in Bad
Faith
Complainant asserts that Respondent registered and is using the
disputed domain name in bad faith.
Regarding registration in bad faith, Complainant asserts that
Respondent sells competing services and has actual knowledge of Complainant’s
rights in its mark, which is evidenced by use of Complainant’s “walking
fingers” mark on the Respondent’s website.
Complainant also contends that Respondent had at least constructive
knowledge of the Complainant’s mark because of Complainant’s registration of its
mark before the USPTO.
Regarding use in bad faith, Complainant contends that Respondent is
using the disputed domain name to redirect traffic to a website featuring
competing services. Complainant asserts that Respondent has intentionally
attempted to attract Complainant’s customers to the Respondent’s website for
financial gain by creating a likelihood of confusion with the Complainant’s
mark as to the source, sponsorship, affiliation, and/or endorsement of
Respondent’s website or location.
Complainant also contends that Respondent is using the disputed domain
name to give consumers the impression that they have reached an official
CARIBBEAN YELLOW PAGES website. Complainant asserts that Respondent’s use of
the disputed domain name intends to disrupt Complainant’s business for its own
commercial gain and is evidence of bad faith and registration and use.
B. Respondent
Respondent has provided a Response that was deficient because the
National Arbitration Forum has determined that a hard copy of the Response was
not received by the Response deadline. However, Respondent transmitted his
response electronically in due time.
According to prior UDRP decisions, the Panel may decide whether or not
to consider Respondent’s submission because it is not in compliance with
Supplemental Rule 5. See Telstra Corp. v. Chu, D2000-0423
(WIPO June 21, 2000) (finding that any weight to be given to the lateness of
the response is solely in the discretion of the panelist).
In the present case, the Panel is of the view that Complainant was
given notice of Respondent’s response and, therefore, failure to provide a
hardcopy of the response was not prejudicial to the parties, for what this
submission should be allowed and given due weight. See Strum v. Nordic Net Exch. AB, FA 102843 (Nat. Arb. Forum
Feb. 21, 2002) (“[Ruling a Response inadmissible because of formal deficiencies
would be an extreme remedy not consistent with the basic principles of due
process. . . ."); see also
J.W. Spear & Sons PLC v. Fun
League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding
that where the respondent submitted a timely response electronically, but
failed to submit a hard copy of the response on time, “the Panel is of the view
that given the technical nature of the breach and the need to resolve the real
dispute between the parties that this submission should be allowed and given
due weight”).
Respondent initially contends that registration of the disputed domain
name was made by requirement of a third party, Mr. Kenneth Mendez Chumaceiro,
who, according to Respondent, would be the real owner of the disputed domain
name, together with the companies Yellow Advertising Ltd and Yellow Pages
Caribbean Ltd.
Identical or Confusingly
Similar
Respondent has neither confirmed nor denied Complainant’s allegations
with respect to this element of the Policy.
Rights or Legitimate Interests
Respondent contends that Complainant does not have legitimate trademark
rights in relation to the domain name. Respondent contends that “Yellow” has
used the website since 2000 and that, through such use, it would have acquired
rights over it.
Registered and used in Bad
Faith
Respondent asserts that the registration was not in bad faith. Respondent
contends that the use of the disputed domain name is not capable of confusing
Internet users because the content on the website that resolves from it is
directly related to the Netherlands Antilles.
Respondent maintains that Complainant does not do business in the
Netherlands Antilles.
Finally, Respondent affirms that it is willing to transfer the disputed
domain name to “the rightful owner”
without costs.
C. Additional Submissions
Complainant submitted an Additional Submission on June 3, 2008. As it was
timely under the National Arbitration Forum’s Supplemental Rule 7, the Panel
decides that this submission should be allowed and given due weight.
In its Additional Submission, Complainant basically contends that:
-
Respondent
asserts without support or argumentation that “record has not established that the complainant has legitimate
trademark rights to the domain-name”;
-
Respondent
does not deny that the domain name is confusingly similar to Complainant’s
trademarks;
-
Respondent
does not deny that Complainant’s trademark rights were obtained prior to the
registration of the domain name;
-
Respondent
does not deny that the domain name has been put to use in a manner which
competes directly with Complainant;
-
Respondent
does not deny that the website associated with the domain name abuses
Complainant’s logo mark in a manner that reinforces the false impression to
consumers that the website is associated with or sponsored by Complainant;
-
Respondent
does not deny that it has no trademark or other intellectual rights in the
domain name;
-
Respondent
does not deny that it is commonly known as “Atombi” and that it is not commonly
know as “YELLOW PAGES CARIBBEAN.”;
-
Respondent
does not deny that it has never operated a bona
fide or legitimate business under the domain name nor does Respondent deny
that it has never made a non-commercial or fair use of the domain name.
Respondent does not deny that it has no permission or license from Complainant
under which it could have registered or used the domain name;
-
Respondent
does not deny that it had actual knowledge of Complainant’s rights at the time
of registration of the domain name as evidenced by its abusive use of the
Complainant’s walking fingers logo mark;
-
Respondent
does not deny that (a) domain name was registered through a U.S. based
registrar; (b) the website associated with the domain is accessible to US
consumers; and (c) the website associated in the US Virgin Islands.
-
Respondent
does assert (i) that the content of the website is not confusingly similar “now that the content is directly for use in
the Netherland Antilles” and (ii) that the “complainant has not proven any activity in the Netherland Antilles;
-
Complainant
clarifies that (i) the associated website is not limited to content related to
the Netherland Antilles and (ii) that the Policy does not require that
Complainant prove commercial activity in the jurisdiction listed in the address
field of the WHOIS record;
-
Respondent
does not deny that it had at least constructive knowledge of Complainant’s US
trademark registration rights.
-
Respondent
does not deny that the domain name has been put to a commercial use which has
intentionally attempted to attract Complainant’s customers to the website
associated with the domain name;
-
Respondent
does not deny that the use of the domain name in conjunction with the website
is disrupting Complainant’s business
In addition, Complainant asserts that Respondent claims of registering
and holding the domain name for third parties should not be considered, as none
of those third parties appear in the WHOIS records and none of them filed a
response.
FINDINGS
The Panel finds that Complainant is the owner
of the
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 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;
(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.
The Panel finds that the domain name <yellowpages-caribbean.com> is confusingly
similar to the CARIBBEAN YELLOW PAGES CPC marks since the dominant portion of
Complainant’s registered marks is being reproduced. The domain name differs
from Complainant’s registered CARIBBEAN YELLOW PAGES CPC marks only in the suppression of the “CPC” portion, the
adjunction of a hyphen, the juxtaposition of the textual elements and the adjunction of a gTLD “.com.”
The Panel finds that the suppression of the “CPC” portion, the adjunction of a
hyphen, the juxtaposition of the textual elements and the adjunction of a gTLD “.com” is not sufficient to escape the finding of similarity and does not
change the overall impression of the designation as being connected to the
trademark of the Complainant.
First, previous panels have
found that the addition of a hyphen does not sufficiently distinguish a
disputed domain name from a mark. See Health Devices Corp. v.
Second, the Panel
also finds that the deletion of the letters “CPC” from the mark is not a
difference sufficient to distinguish the disputed domain name from the mark. See also WestJet
Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20,
2001) (finding that the <westjets.com> domain name is confusingly similar
to the complainant’s mark, where the complainant holds the WEST JET AIR CENTER
mark).
Finally
The Panel finds that the Complainant has
established the first element of the Policy.
A complainant is required to make out an
initial prima facie case that the respondent lacks rights or legitimate
interests. Once such prima facie case is made, respondent carries the
burden of demonstrating rights or legitimate interests in the domain name. If
the respondent fails to do so, a complainant is deemed to have satisfied
paragraph 4(a)(ii) of the Policy. Freeman v.
Mighty LLC, D2005-0263 (WIPO April 28, 2005);
With respect to paragraph 4(c)(i) and 4(c)(iii) of the Policy, Respondent is using the disputed domain name to offer services competing with Complainant’s business. The panel finds that this is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal services and sale of law-related books under Complainant's name is not a bona fide offering of goods and services because Respondent is using a mark confusingly similar to the Complainant's to sell competing goods.”); 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).
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates
Respondent has ever been commonly known by the domain name. Complainant contends that Respondent is not
commonly known by the disputed domain name because the WHOIS information
indicates that Respondent is known as “ATOMBI,” and does not indicate that
Respondent has ever been known by the <yellowpages-caribbean.com> domain name. Complainant also
asserts that it has never licensed or authorized Respondent to use the YELLOW
PAGES CARIBBEAN CPC mark. See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information
for the disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”);
see also 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).
The Panel finds that the circumstances listed
above establish that Respondent has no rights or legitimate interests in the
domain name at issue.
Complainant alleges that Respondent’s use to
redirect Internet users to a competing website demonstrates registration and
use in bad faith. The Panel finds that
such use is capable of creating confusion as to Complainant’s source or
sponsorship of the website that resolves from the <yellowpages-caribbean.com> domain name. The Panel also concludes that Respondent is
benefiting from the goodwill associated with the CARIBBEAN YELLOW PAGES CPC, thereby evidencing registration and use in
bad faith pursuant to paragraph 4(b)(iv) of the Policy. See State Farm Mut. Auto. Ins.
Co. v. Northway, FA 95464 (Nat. Arb.
Forum Oct. 11, 2000) (finding that the respondent registered the domain name
<statefarmnews.com> in bad faith because the respondent intended to use
the complainant’s marks to attract the public to the web site without
permission from the complainant); see
also Toyota Motor Sales U.S.A. Inc. v.
Clelland, FA 198018 (Nat. Arb. Forum Nov. 10, 2003) (“Respondent
used <land-cruiser.com> to advertise its business, which sold goods in
competition with Complainant. This establishes bad faith as defined in paragraph
4(b)(iv) of the Policy.”).
The Panel also finds that Respondent’s use is
capable of disrupting Complainant’s business.
The Panel therefore finds additional evidence of registration and use in
bad faith under paragraph 4(b)(iii) of the Policy. See
Moreover, in its Additional Submission,
Complainant maintains that Respondent had constructive knowledge of Respondent
at the time of its registration of the disputed domain name. The Panel finds persuasive Complainant’s
allegation that the Respondent must have been aware of the Complainant’s rights
in the mark and, further, that Respondent knowingly infringed the Complainant’s
trademark when it registered the subject domain name. The Panel finds
irrelevant if the Respondent registered the disputed domain name by requirement
of a third party; whoever intended to register such domain name must had been
aware of Complainant’s trademark rights over it. The Panel finds that this
knowledge is further evidence of registration and use in bad faith under paragraph
4(a)(iii) of the Policy. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum
Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent
reasonably should have been aware of Complainant’s trademarks, actually or
constructively.”); see also Samsonite
Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding
that evidence of bad faith includes actual or constructive knowledge of a
commonly known mark at the time of registration).
Therefore, the Panel finds that Respondent
registered and is using the domain name in bad faith.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <yellowpages-caribbean.com> domain
name be TRANSFERRED from Respondent to Complainant.
Luiz Edgard Montaury Pimenta, Panelist
Dated: June 18, 2008
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