Alexis Burwell Vales v. Marc Mouse
Claim Number: FA0209000126647
Complainant is Alexis Burwell Vales, Puerto Vallarta, MEXICO (“Complainant”) represented by Donald M. Gindy. Respondent is Marc Mouse, Puerto Vallarta, MEXICO (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lapuntarealty.com>, registered with Register.com.
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.
Robert T. Pfeuffer, Senior District Judge as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 30, 2002; the Forum received a hard copy of the Complaint on September 27, 2002.
On September 30, 2002, Register.com confirmed by e-mail to the Forum that the domain name <lapuntarealty.com> is registered with Register.com and that the Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com 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 7, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 27, 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on November 22, 2002.
Both Complainant’s and Respondent’s additional submissions were timely.
On December 11, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Robert T. Pfeuffer, Senior District Judge as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
1. That the domain name is identical to the registered trademark held by Complainant in Mexico in connection with his business of selling real estate under the name of “La Punta Realty”.
2. That Respondent has no rights or legitimate interest in respect to the domain name because he was a partner of Complainant at the time he was requested to register the domain name.
3. That the domain name has been registered in bad faith by Respondent due to his use of the domain site to disrupt the business of Complainant.
Respondent contends that Complainant is in the real estate brokerage business at
Puerta Vallerta, Mexico, but does not use the name “La Punta Realty”, but rather another
name in connection with a partnership and that he has never tried to do anything to
disrupt Complainant’s business under the former name. He further contends that his
only purpose in utilizing the “La Punta Realty” website is to warn potential American
investors of the pitfalls in connection with purchasing real estate in Mexico.
C. Additional Submissions
Please note that Complainant has filed an additional submission and Respondent
merely says that the matters raised in Complainant’s Additional Submission are irrelevant
and therefore he will not respond. Complainant has responded to the Panel’s Order by supplying the letter from Respondent to “Miguel” as ordered on December 20, 2002. It reveals the true facts regarding the alias “Tony Best” as the party that registered the domain name in issue. Further, Respondent’s admissions regarding the use of the website reveal his true intentions to gain advantage in his present lawsuit with Complainant and his partner.
1. The Panel finds that the domain name is identical to the registered trademark LA PUNTA REALTY held by Alexis Burwell-Vales in Mexico. That Respondent, Marc Mouse is an alias of Alain Bali and he has also used other aliases such as Max Flash and Tony Best. This is confirmed in his letter attached as Exhibit “A” to Complainant’s Rebuttal Brief that he addressed to “Miguel” stating that he is Tony Best. The domain name <lapuntarealty.com> is identical as numerous cases in the past have disposed of any assertion that by adding the words “.com” to La Punta Realty does not change the fact that the domain name is identical to the registered trademark. See V Secret Catalogue, Inc. et al v. ARTCO, Inc., FA 94342 (Nat. Arb. Forum May 9, 2000).
2. The Panel further finds that Respondent has no rights or legitimate interests in respect to the domain name because Complainant had utilized the common law trademark LA PUNTA REALTY in his business of selling real estate from on or about June 10, 2001, a date which was prior to the registration of the domain name <lapuntarealty.com> which occurred on August 4, 2001. At the time the mark was registered by Respondent, Respondent was associated with Complainant’s real estate business as a partner in the sale of homes and condominiums. The Panel further finds that Complainant is the holder of a trademark LA PUNTA REALTY in Mexico which is identical to the domain name registered by Respondent.
3. It is further found that Respondent registered the name <lapuntarealty.com> using the name Tony Best as registrant whereas the domain name was obtained by Respondent at the specific request of Complainant who did not authorize Respondent to register the site under “Tony Best”. Respondent has engaged in a pattern of utilizing the contested domain name for the purpose of tarnishing the business of Complainant. Confusion between Complainant’s business and the information being directed to the public on Respondent’s website creates a likelihood of confusion in that the name contains the trademark held by Complainant. See Cabela’s Inc. v. Cupcake Patrol, FA 95080 (Nat. Arb. Forum Aug. 29, 2000); Minnesota Mining and Mfg. Co. vs. Taylor, 21 F. Supp.2d 1003, 1005 (D.Minn.1998); Intermatic Inc. vs. Toeppen, 947 F.Supp.1227, 1235-1236 (N.D.Ill.1996).
4. The Panel finds that Mr. Bali has no rights or legitimate interests in the real estate brokerage firm “La Punta Realty”. It is therefore clear that the defamatory and provocative language found on the <lapuntarealty.com> website is creating confusion and misleading the consuming public. Respondent admits to his true purpose in his letter to “Miguel” attached to Complainant’s Additional Response as Exhibit “A” wherein he states that his use of the website “is another way to fight to take over Paradise Cove”.
5. The Panel finds that the domain name has been registered in bad faith as exhibited by the actions of Respondent. By registering this domain name, Respondent has prevented the lawful owner of the trademark from reflecting his trademark in a corresponding domain name in violation of Policy ¶ 4(b)(ii). Respondent’s use of the domain name to disrupt the business of Complainant and his partner, constitutes violation of Policy ¶ 4(b)(ii). By his use of the domain name, the Panel finds that Respondent is attempting to deceive Internet users by creating a likelihood of confusion as to source, sponsorship, affiliation or endorsement of the website. The decision in El Paso County Hosp. Dist. v. Southwest-Tech., Inc., FA 114675 (Nat. Arb. Forum Aug. 7, 2002) addresses a similar set of circumstances. An employee was entrusted with filing a domain name for his employer. The employee did so, but named himself as administrative and technical contact. After his resignation, he attempted to obtain compensation from his former employer for the domain names. While Respondent has not requested compensation for the domain site, his actions are evidence of bad faith and that he has attempted to disrupt the business practices of the trademark holder who should also be the rightful owner of the domain site.
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.
Identical and/or Confusingly Similar
The Panel finds that website registered by Respondent is identical to the
trademark held under Mexican law by Complainant.
Rights or Legitimate Interests
The Panel finds that Respondent has no rights nor legitimate interests in the domain name
Registration and Use in Bad Faith
The Panel finds that Respondent registered the domain name when he was a partner of Complainant and should have transferred or registered the domain name in
Complainant’s name rather than one of the aliases under which he operates. The
Panel further finds that Respondent has utilized the domain site for the purpose of
tarnishing the reputation of Complainant’s business which he operates under the
trademark LA PUNTA REALTY. The registration and use of the domain name by Respondent is in bad faith.
The Panel orders that the domain name <lapuntarealty.com> be TRANSFERRED forthwith to Complainant, Alexis Burwell Vales.
Robert T. Pfeuffer, Senior District
Dated: January 6, 2003
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