Nueva Cocina Foods, Inc. v.
Manuel Cabeza Blanco
Claim Number: FA0812001239407
PARTIES
Complainant is Nueva Cocina Foods, Inc. (“Complainant”), represented by Richard
C. Bulman, of Bulman Business & Technology Law,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nuevacocina.com>, registered with Onlinenic,
Inc.
PANEL
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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on December 19, 2008; the
National Arbitration Forum received a hard copy of the Complaint on December 19, 2008.
On January 3, 2009, Onlinenic, Inc. confirmed by e-mail to the
National Arbitration Forum that the <nuevacocina.com> domain name is
registered with Onlinenic, Inc. and that
Respondent is the current registrant of the name. Onlinenic,
Inc. has verified that Respondent is bound by the Onlinenic, 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 January 9, 2009, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of January 29, 2009 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@nuevacocina.com by
e-mail.
A timely Response was received and determined to be complete on January 29, 2009.
An Additional Submission was received from Complainant dated January 2,
2009.
All submissions were considered by the Panel.
On February 6, 2009, 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent
to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant is the holder of U.S. Registration No. 3,096,905 for the trademark, “NUEVA COCINA” in International Class 30 (“Trademark”). Such mark is used in conjunction with food products including flavored rice mixes and seasonings in general. The Trademark is registered for a term of 20 years from February 6, 2004 with the United States Patent and Trademark Office.
The Respondent is believed to have acquired the domain name “NUEVA COCINA” on or about November 2, 2007 from First Technologies, Cidro.
The Respondent is using a domain name that exactly duplicates the trademark of Complainant.
The Respondent is not a licensee of Complainant, nor is he otherwise authorized to use Complainant’s marks.
The Respondent should be considered as having no rights or legitimate interests in the NUEVACOCINA.COM domain name that is the subject of this Complaint.
The Respondent has shown no evidence of use or demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services.
The Respondent, neither as an individual, business, or other organization has been commonly known by the domain name.
Respondent is not making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain or misleading consumers or tarnishing the trademark at issue. As of this date, the site is “parked,” has a link to Google that references half dozen recipes, and does nothing but trade in the traffic that visits the site as a result of consumers seeking Complainant’s website.
This domain name should be considered as having been acquired and registered and used in bad faith by the Respondent.
Respondent acquired the domain name
subsequent to Complainant’s existence and the registration of its valid
Websites operated by unscrupulous domain name sellers typically integrate a confusing name into global search indexes, both to siphon site traffic from legitimate companies and domains and to serve as a placeholder for the marketing and sale of such domains. Respondent has undertaken these exact bad faith activities.
Respondent’s website is a placeholder with a framework for resale. Respondent has linked half a dozen recipes to the domain to create the appearance of a “fair use” site.
Respondent is earning revenue from misdirected site visits on the strength of the Complainant’s trademarked name and activities in the food industry. Such actions diminish the name and reputation of the Complainant and cause it to suffer damages through loss of traffic, diversion of traffic, tarnished image and reduced sales opportunities.
Respondent currently holds himself out as a purveyor of Internet names. He has regularly interacted on domain name brokerage sites and has routinely engaged in the negotiation and brokerage of domain names.
Respondent has not fully developed a Web site using the domain name at issue nor has he made any other good faith use of the domain name.
Respondent is infringing the
Complainant’s valid
B. Respondent
Respondent is from
The words "nueva" and "cocina" are Spanish names and
Respondent lives in
The domain name nuevacocina.com is identical to
trademark "nueva cocina."
There is no evidence of "Registration and
Use in Bad Faith:" It was impossible
to register the name in bad faith because trademark did not exist until May 23,
2006 and the original domain registration date is November 20, 2000, nearly 6
years before.
Respondent did not
buy the name in bad faith because it did not know about the Complainant’s
trademark. The Complainant’s trademark
is not being used in
"NUEVA COCINA" is a generic name; there
are many companies and trademarks named "NUEVA COCINA."
Respondent found 197 matches including
"nueva cocina" on the company name or trademark and there are six exact matches.
"NUEVACOCINA"
is registered as well under other top level domains and country code domain
names.
"NUEVACOCINA"
is the translation of the French “Nouvelle cuisine.” Nouvelle cuisine (French: “new cuisine”) is
an approach to cooking and food presentation used in French cuisine.
Respondent did not
use the name in bad faith. Respondent did not try to contact any of the
companies called “nueva cocina.” Respondent
did not offer the name for sale, rent not any similar way. Respondent did not “intentionally attempt to attract,
for commercial gain, Internet users to Respondent’s web site or other on-line
location, by creating a likelihood of confusion with the Complainant’s mark.” Respondent did use it in good faith to build
a “recipes website.”
Respondent did not
know about the trademark. Complainant does
nothing (sell, manufacture, distribute, and advertise) in
Respondent did not
“siphon site traffic.” Respondent did
receive his own traffic.
Currently,
nuevacocinafoods.com has only 11 recipes.
They have added most of the recipes recently.
Respondent is not a purveyor
of Internet names. Respondent is trying
to buy the Spanish domain name “viajar.net” (travel.net in English), which is a
generic name. Respondent is not trying
to sell a hijacked trademark domain name.
Respondent invests money on domain names, and only buys generic
names. Although Respondent does sell some
domain names, Respondent buys them to develop and keep.
Complainant decided
to use a trademark knowing the nuevacocina.com was already registered and in
use. In addition to that there are in
the world many other companies and trademarks exactly
called “nueva cocina.” Now they are
trying to steal Respondent’s domain name.
This is call “Reverse Domain Hijacking.”
C. Additional Submissions
Complainant
The information submitted by Respondent indicated that the domain name
nuevacocina.com is identical to Complainant’s trademark “NUEVA COCINA.”
Respondent admits to the acquisition of the .com domain name after
Complainant acquired the
Respondents identification of competing marks does not
substantiate his use or impermissible use of Complainant’s mark.
Respondent has used the name in “bad faith” because he is using a “.com”
name identical to Complainant’s protected
There is a 100% likelihood of search confusion between the Respondent
and Complainant because of the identical name.
Complainant has recipes on its site, but is in the food industry and
manufactures and markets food product mixes.
Respondent’s action to add recipes to a site that does nothing but trade
upon the image of Complainant (and others with a legitimate claim) is a wholly
fabricated attempt to try and establish some legitimate identity and purpose
where none exists.
Complainant is a
Trademark law prohibits “generic” marks from being registered. A registrant must show that the mark has been
distinguished through use. Respondent’s
use of “Nueva Cocina” trademark because it is a good generic name speaks
exactly to the issue of why his continued infringement in the “.com” domain
space will jeopardize the commercial image and interests of Complainant.
FINDINGS
For the reasons set forth below the Panel
finds that Complainant has not established that it is entitled to the relief
requested.
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.
Complainant filed a trademark
application for its NUEVA COCINA mark with the United States Patent and
Trademark Office (“USPTO”) on February 6, 2004, and has provided evidence the
mark was subsequently registered on May 23, 2006 (Reg. No. 3,096,905). The Panel finds Complainant’s registration
establishes its rights in the NUEVA COCINA mark under Policy ¶ 4(a)(i). See Microsoft Corp. v.
Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the
MICROSOFT mark through registration of the mark with the USPTO.”); see also
Complainant contends Respondent’s <nuevacocina.com> domain name is identical to Complainant’s NEUVA
COCINA mark. The Panel finds the
deletion of a space and the addition of the generic top-level domain “.com” do
not distinguish Respondent’s disputed domain name from Complainant’s mark. The Panel finds the two identical under
Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v.
While Respondent contends that the <nuevacocina.com> domain name is comprised of common, descriptive terms and as such cannot be found to be identical to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”).
Complainant has proven this
element.
The Panel finds that Complainant has not established
a prima facie case in support of its arguments that Respondent lacks
rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006)
(holding that the complainant did not satisfactorily meet its burden and as a
result found that the respondent had rights and legitimate interests in the
domain name under UDRP ¶ 4(a)(ii)); see
also Workshop Way, Inc. v. Harnage, FA
739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the
complainant’s burden by showing it was making a bona fide offering of
goods or services at the disputed domain name).
Respondent contends it is using the disputed domain name to
operate a recipe site, where it previously listed four recipes, but now has
eleven. The Panel finds Respondent’s use
of the disputed domain name is evidence of a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(iii). See Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum
Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by
showing it was making a bona fide offering of goods or services at the
disputed domain name); see also Digital
Interactive Sys. Corp. v. Christian W, FA 708968
(Nat. Arb. Forum July 3, 2006) (concluding that the
complainant failed to satisfy Policy ¶ 4(a)(ii) because the respondent provided
sufficient evidence to convince the panel that it was using the disputed domain
name for a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i)).
Respondent
also argues that the terms of the <nuevacocina.com> domain name are generic and of common use and therefore,
Complainant does not have an exclusive monopoly on the terms on the
Internet. The contested domain name is
comprised of common terms. The Panel
finds that Respondent has established rights or legitimate interests in the
disputed domain name pursuant to Policy ¶ 4(a)(ii). See Kaleidoscope Imaging,
Inc. v. V Entm’t, FA 203207
(Nat. Arb. Forum Jan. 5, 2004) (finding that the
respondent was using the <kaleidoscope.com> domain name for a bona
fide offering of goods or services because the term was “generic” and
respondent was using the disputed domain name as a search tool for Internet
users interested in kaleidoscopes); see
also Qwest
Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Nat. Arb. Forum July 23, 2004) (stating
that “Complainant’s rights in the QWEST mark are limited to its application to
the tele-communications industry,” where a variety of other businesses used the
mark in unrelated fields).
Complainant has not proven this element.
The domain name was first registered in November, 2000. Complainant’s trademark was registered February 6, 2004. There is no evidence that when Respondent acquired the name that he knew or should have known of Complainant’s trademark.
The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
The Panel has found that Respondent
has rights or legitimate interests in the <nuevacocina.com> domain name pursuant
to Policy ¶ 4(a)(ii).
The Panel therefore finds that Respondent did not register or use the
disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding
that the issue of bad faith registration and use was moot once the panel found
the respondent had rights or legitimate interests in the disputed domain name);
see also Vanguard Group Inc. v. Investors Fast Track, FA 863257
(Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate
interests in the disputed domain name, his registration is not in bad faith.”).
The Panel further finds that
Respondent has not registered or used the <nuevacocina.com> domain name in bad
faith since Respondent has not violated any of the factors listed in Policy ¶
4(b) or engaged in any other conduct that would constitute bad faith
registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro
Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where
the respondent has not attempted to sell the domain name for profit, has not
engaged in a pattern of conduct depriving others of the ability to obtain
domain names corresponding to their trademarks, is not a competitor of the
complainant seeking to disrupt the complainant's business, and is not using the
domain name to divert Internet users for commercial gain, lack of bona fide
use on its own is insufficient to establish bad faith); see also Starwood
Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat.
Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that
respondent registered and used the disputed domain name in bad faith because
mere assertions of bad faith are insufficient for a complainant to establish
UDRP ¶ 4(a)(iii)).
Respondent contends that the <nuevacocina.com> domain name is comprised entirely of common terms that have many meanings apart from use in Complainant’s NUEVA COCINA mark. The Panel finds that the disputed domain name contains commonly-used terms and that this indicates that Respondent did not register and use the <nuevacocina.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum July 9, 2004) (holding that the respondent’s registration and use of the <target.org> domain name was not in bad faith because the complainant’s TARGET mark is a generic term); see also Miller Brewing Co. v. Hong, FA 192732 (Nat. Arb. Forum Dec. 8, 2003) (finding that because the respondent was using the <highlife.com> domain name, a generic phrase, in connection with a search engine, the respondent did not register and was not using the disputed domain name in bad faith).
Complainant has not proven this
element.
Reverse Domain Name Hijacking
The Panel finds Complainant has not
engaged in reverse domain name hijacking under the Policy. See
Watson Pharm., Inc. v. WhoisGuard, FA 588321 (Nat. Arb. Forum Dec. 19,
2005) (rejecting the respondent’s assertion of reverse domain name hijacking
because there was no evidence that the complainant was using the Policy other
than to declare its rights); see also
Renaissance
Hotel Holdings, Inc. v. The Renaissance
DECISION
Complainant 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 <nuevacocina.com> domain name REMAIN with Respondent.
Honorable Karl V. Fink (Ret.), Panelist
Dated: February 25, 2009
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