The Abuela Company LLC v. ARISU TECH
Claim Number: FA0808001222449
Complainant is The Abuela Company LLC (“Complainant”), represented by James
W. Kinnear, of Jeffer, Mangels, Butler & Marmaro LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <coquito.com>, registered with Godaddy.com, Inc.
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.
James A Crary, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 27, 2008; the National Arbitration Forum received a hard copy of the Complaint on August 28, 2008.
On August 28, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <coquito.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 September 8, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 7, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A Crary 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 <coquito.com> domain name is identical to Complainant’s COQUITO.COM mark.
2. Respondent does not have any rights or legitimate interests in the <coquito.com> domain name.
3. Respondent registered and used the <coquito.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Abuela Company LLC, markets and sells the ready-to-drink cocktail “Mi Abuelita Coquito” since 2007, and has filed an intent-to-use application for its service mark COQUITO.COM (Ser. No. 77/490,472 filed June 4, 2008) with the United States Patent and Trademark (“USPTO”) for provision of an interactive website in the field or of recipes for alcoholic beverages and cocktails.
Respondent registered the disputed domain name on April 21, 2002. There is no corresponding active website associated with the disputed domain name.
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.
In order for a complainant to have sufficient rights in a mark for the purposes of Policy ¶ 4(a)(i) standing, it is not necessary for Complainant to have a registered trademark. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant can achieve standing through a showing of sufficient common law rights.
Complainant has submitted evidence of its USPTO trademark
application, and has asserted its common law rights in the mark dating to
2007. The Panel finds that this is
sufficient evidence for rights in the mark under Policy ¶ 4(a)(i). See Jerry Damson, Inc. v.
The Panel finds that the disputed domain name is identical
to the COQUITO.COM mark under Policy ¶ 4(a)(i). See Snow Fun, Inc. v.
O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the
domain name <termquote.com> is identical to the complainant’s TERMQUOTE
mark); see also
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
For the reasons detailed in Policy ¶ 4(a)(iii), the Panel finds that Policy ¶ 4(a)(ii) has not been satisfied.
The WHOIS information lists the registration date for the disputed domain name as April 21, 2002. Complainant has not evidenced its use of the mark before this date. Previous panels have found that a respondent could not have registered or used its disputed domain name in bad faith when it registered the disputed domain name before the time that the complainant’s rights in the mark commenced. See Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001) (finding that it is “impossible” for the respondent to register disputed domain name in bad faith if the complainant's company did not exist at the time of registration); see also Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark). Therefore, the Panel finds that Policy ¶ 4(a)(iii) has not been satisfied, in that Respondent did not register or use the disputed domain name in bad faith.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <coquito.com> domain name REMAIN with Respondent.
James A Crary, Panelist
Dated: October 21, 2008
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