Primera Technology, Inc. v. Primera
Informatica
Claim Number: FA0209000125366
PARTIES
Complainant
is Primera Technology, Inc.,
Plymouth, MN, USA (“Complainant”) represented by E. Patrick Shriver, of Rider,
Bennett, Egan & Arundel, LLP.
Respondent is Primera Informatica,
Caceres, SPAIN (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <primera.com>,
registered with Bulk Register.com, 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.
John
J. Upchurch as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on September 18, 2002; the Forum received a hard copy of the
Complaint on September 18, 2002.
On
September 19, 2002, Bulk Register.com, Inc. confirmed by e-mail to the Forum
that the domain name <primera.com>
is registered with Bulk Register.com, Inc. and that Respondent is the current
registrant of the name. Bulk Register.com, Inc. has verified that Respondent is
bound by the Bulk Register.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 20, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of October 10, 2002 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@primera.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
October 30, 2002, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the 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 Forum’s Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant’s Submission makes the
following assertions:
a. Respondent’s <primera.com> domain
name is identical to Complainant’s registered PRIMERA mark.
b. Respondent does
not have any rights or legitimate interests in the <primera.com> domain
name.
c. Respondent
registered and used the <primera.com> domain name in
bad faith.
B. Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant, Primera Technology, Inc., is
the holder of the trademark PRIMERA in the United States (U.S. Reg. No.
1,876,441, registered on January 31, 1995 on the Principal Register of the
United State Patent and Trademark Office (“USPTO”) and first used in commerce
on September 15, 1992), and holds trademarks in Canada, Germany, and France.
Complainant has also applied for registration of the PRIMERA mark as a
Community Trademark, under European Union law (No. 002635480, submitted on
March 27, 2002). This mark is used in conjunction with Complainant’s business
manufacturing CD and DVD duplication and printing systems. Complainant operates
websites at <primeratechnology.com>, <primerastore.com>, and
several other websites incorporating the PRIMERA mark.
Respondent, Primera Informatica,
registered the <primera.com>
domain name on March 6, 1997, and is not licensed or otherwise authorized to
make any use of the PRIMERA mark for any purpose. As of at least August 14,
2002, Respondent’s domain name resolved to a blank page. After Complainant
attempted to contact Respondent about its copyright infringement with a cease
and desist letter, Respondent redirected the disputed domain name to
<primera-opticos.com>.
DISCUSSION
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 the 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.
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 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.
Identical and/or Confusingly Similar
Complainant has established rights in its
PRIMERA mark through registration on the Principal Register of the USPTO,
registration in other nations, as well as via continuous and widespread use of
the mark worldwide. The fact that Complainant has not registered its mark in
the nation where Respondent has its contact address does not defeat
Complainant’s claim of rights in the mark. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7,
2001) (finding that the Policy does not require that the mark be registered in
the country in which a Respondent operates.
It is sufficient that a Complainant can demonstrate a mark in some
jurisdiction).
Respondent’s <primera.com> domain name is identical to Complainant’s
PRIMERA mark. The difference between Respondent’s domain name and the
registered mark of Complainant is the addition of the top-level domain “.com”
after the mark. This minimal difference does not prevent a finding of
identicality under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000)
(finding that the top-level of the domain name such as “.net” or “.com” does
not affect the domain name for the purpose of determining whether it is
identical or confusingly similar); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to Complainant’s mark because the generic
top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).
Accordingly, the Panel finds that the <primera.com> domain name is
confusingly similar to Complainant’s registered PRIMERA mark under Policy ¶
4(a)(i).
Rights or Legitimate Interests
The burden of proving a lack of rights or
legitimate interests in a domain name rests initially upon Complainant. Under
Policy ¶¶ 4(c)(i-iii), Respondent can rely on an “bona fide offering of goods
or services” connected with the disputed domain name, the fact that it has been
“commonly known by the domain name”, or that it is making a “legitimate
noncommercial or fair use of the domain name” to demonstrate a right or
legitimate interest in a domain name. If Complainant rebuts each of these
elements, it has satisfied its burden by successfully addressing any of the
specified claims Respondent could make under Policy ¶¶ 4(c)(i-iii), therefore
shifting the burden to Respondent. See Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that
Respondent has no rights or legitimate interests in respect of the domain, the
burden shifts to Respondent to provide credible evidence that substantiates its
claim of rights and legitimate interests in the domain name).
It is neither a bona fide offering of
goods or services, nor an example of a legitimate noncommercial or fair use
under Policy ¶¶ 4(c)(i) and (iii) when the holder of a domain name that is
confusingly similar to an established mark passively holds the domain name. See
Chanel, Inc. v. Heyward,
D2000-1802 (WIPO Feb. 23, 2001) (finding no rights or legitimate interests
where “Respondent registered the domain name and did nothing with it”); see
also Flor-Jon Films, Inc. v. Larson,
FA 94974 (Nat. Arb. Forum July 25, 2000) (finding that Respondent’s failure to
develop the site demonstrates a lack of legitimate interest in the domain
name). Respondent made no use of the disputed domain name for over five years
before linking it to <primera-opticos.com>. This redirection occurred
after Respondent received its cease-and-desist letter from Complainant.
Regardless of whether this nominal “development” of the domain name would be
enough to defeat a finding of passive holding, the Panel will not take into
account use of the domain name that only occurs because of the actions of
Complainant. See Ritz-Carlton
Hotel v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that
prior to any notice of the dispute, Respondent had not used the domain names in
connection with any type of bona fide offering of goods and services); see
also Melbourne IT Ltd. v. Stafford,
D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in
the domain name where there is no proof that Respondent made preparations to
use the domain name or one like it in connection with a bona fide offering of
goods and services before notice of the domain name dispute, the domain name
did not resolve to a website, and Respondent is not commonly known by the
domain name).
Respondent does not appear to have any
rights in, nor is it commonly known by, the name PRIMERA. Furthermore,
Complainant has not given Respondent permission or consent to use its PRIMERA
mark, and Respondent’s registration of the disputed domain name occurred years
after Complainant initially registered its mark and began using it in commerce.
See Charles Jourdan Holding AG v.
AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate
interests where (1) Respondent is not a licensee of Complainant; (2)
Complainant’s prior rights in the domain name precede Respondent’s
registration; (3) Respondent is not commonly known by the domain name in
question). Furthermore, while Complainant concedes that its mark means “first”
in Spanish, the Panel will not speculate that Respondent is commonly known by a
generic word without some sort of showing by Respondent, especially in light of
Complainant’s rights in the mark. See Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no
rights or legitimate interests where Respondent has advanced no basis on which
the Panel could conclude that it has a right or legitimate interest in the
domain names, and no use of the domain names has been established).
Once a complainant has successfully
presented its prima facie case illustrating a respondent’s lack of
rights or legitimate interests in its domain name, the burden of demonstrating
rights and legitimate interests in the domain name shifts to the respondent.
As Respondent submitted nothing to the
Panel in Response to this Complaint, Respondent fails to meet that burden. See
Pharmacia & Upjohn AB v. Romero,
D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests
where Respondent failed to submit a Response to the Complaint and had made no
use of the domain name in question).
Accordingly, the Panel finds that
Respondent does not have any rights or legitimate interests in its domain name
under Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Respondent registered and used the
disputed domain name in bad faith. While
Policy paragraph 4(b) illustrates four examples that evidence bad faith, this
list is not exhaustive. See
Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that
the criteria specified in 4(b) of the Policy is not an exhaustive list of bad
faith evidence); see also Home
Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7,
2000) (“[J]ust because Respondent’s conduct does not fall within the
‘particular’ circumstances set out in ¶4 (b), does not mean that the domain
names at issue were not registered in and are not being used in bad faith”).
One example of conduct evidencing bad
faith use and registration not enumerated in the Policy is the passive holding
of a domain name. See DCI S.A. v.
Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that
Respondent’s passive holding of the domain name satisfies the requirement of ¶
4(a)(iii) of the Policy); see also Caravan
Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that
Respondent made no use of the domain name or website that connects with the
domain name, and that passive holding of a domain name permits an inference of
registration and use in bad faith).
Respondent did nothing to develop the
disputed domain name for years. As Respondent submitted no Response to the
Complaint, the Panel concludes that Respondent has no ultimate plan to develop
the website, and infers that Respondent’s registration and passive holding of
the disputed domain name was committed in bad faith. See Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw
adverse inferences from Respondent’s failure to reply to the Complaint); see
also Hewlett-Packard Co. v. Martineau,
FA 95359 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent’s failure to
submit an assertion of good faith intent to use the domain name, in addition to
the passive holding of the domain name, reveal that Respondent registered and
uses the domain name in bad faith).
Accordingly, the Panel finds that
Respondent both registered and used its domain name in bad faith, and Policy ¶
4(a)(iii) has been satisfied.
DECISION
Having established all three elements
under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <primera.com> domain name be TRANSFERRED
from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: November 4, 2002
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